SPECIAL SECTION/BUSINESS GUIDE: IP Protection of Ceramic Creations

December 1, 2008
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Intellectual property protection helps prevent competitors from using your developments and/or product designs.

Intellectual property can be broadly defined as the bundle of rights one may obtain for the result of intellectual or creative activity. The advantage of intellectual property (IP) protection is that it may prevent competitors from using your developments.

What is Intellectual Property?

Several types of intellectual property are pertinent to the ceramic industry. Trademarks protect any means used to identify and distinguish goods or services of one manufacturer or merchant from those of another. Ceramics were the first products in history to carry a trademark-the scratch marks ancient Egyptian potters made in their fired clay pots to identify the pot’s maker. Today, trademarks are not limited to “marks,” but can be any indicator of source, including a word, personal name, design, scent, sound, color or container.

“Trade dress” falls under the category of trademarks and generally refers to the overall appearance and impression of a product or packaging, including design, size, shape, texture, product color, color combinations, and graphics. Trade dress must be distinctive to qualify for trademark protection and must be non-functional. Thus, for example, a ceramics company was not allowed to protect the underside ribs of its China dishware as trade dress, because those ribs served the functions of reducing vibratory stress on the dishware (thereby reducing chipping, cracking and breaking) and of allowing the dishware to be stacked in the kiln.1

One can register a trademark at the federal and/or state level, but trademark rights only arise from actual usage of the trademark in commerce on a product or in association with a service. In essence, it is public perception that creates and defines trademark rights, which is why consumer surveys are a primary form of evidence in a trademark lawsuit. This is also why trademark owners must be ever-vigilant in protecting their trademark in the marketplace. Trademark protection is potentially eternal, because it lasts as long as the trademark continues to be a distinctive indicator of source.

Federal trademark registration is relatively inexpensive, typically under $2,000 for the preparation, filing and prosecution of the trademark application. Before adopting a trademark and filing for registration, it is prudent to first conduct a search for similar trademarks to see if there are any potential conflicts; such searches typically cost about $1500.

Utility patents protect “inventions,” which can include processes (such as the steps for manufacturing a porous ceramic honeycomb structure appropriate for use in a catalytic converter), machines (such as a furnace or an automated brick-making machine), articles of manufacture (such as a ceramic ball bearing or a multi-layered ceramic capacitor), or compositions of matter (such as a glass-ceramic compound appropriate for use as a dental prosthesis, or as a substrate in an electronic device). The patent basically consists of one or more drawings, a specification describing the invention, and one or more claims that define exactly what the patentee is claiming as his or her invention.

The term of protection of a patent is 20 years from the filing of the application. Fees and costs for securing U.S. utility patent protection typically range from $8000 to $18,000. The actual costs may vary greatly depending on the field of technology and the nature of the invention.

Design patents protect the “ornamental” (i.e., non-functional) aspects of an article of manufacture. Thus, one can obtain a design patent on the ornamental features of a dinner plate, or a roof or floor tile. Because it protects only the non-functional appearance of an article of manufacture, a design patent has no specification (i.e., no written description) and consists primarily of one or more drawings that serve to define the “design” being patented. The term of protection is 14 years from the issuance of the patent, and the process is fairly inexpensive, ranging from $2000 to $3500 for the preparation, filing and prosecuting of the design patent (including attorney, drawing preparation and government fees).

Copyright protects “original works of authorship,” such as literary, musical, dramatic, choreographic, pictorial, sculptural, motion pictures, sound recordings and architectural works, against unexcused copying, distribution, adaptation, performance, display or importation. Copyright is not limited to books, magazines, and movies. It also protects, for example, patterns on ceramic tile, product and user manuals, advertising copy and photographs, website design and content, and lines of computer code.

Copyright “exists” the moment  qualifying work is created and fixed in a tangible medium, without any formal or legal action on the part of the creator. Although a copyright notice on the work is not required, it is a good idea and may provide certain benefits if you end up suing an infringer of your copyright. Similarly, registering your copyright with the Copyright Office is not required for copyright protection (although it is generally required in order to sue). Prompt registration does provide certain benefits, however, such as the ability to seek statutory damages, which can be increased for willful infringement, and attorney’s fees.

The term of copyright protection is either 70 years after the author’s death, or the shorter of 95 years from first publication or 120 years after creation for works for hire (i.e., works made by an employee within the scope of employment). Copyright registration is easy and relatively inexpensive, in the $300 to $500 range (including both attorney and government fees).

Trade secrets consist of any information that is maintained as secret, has commercial value and is not generally known in the industry. Typical trade secrets include formulas, recipes, manufacturing methods, machinery specifications and design, customer and vendor lists, and marketing and sales data. Unlike patents, copyrights and trademarks, there is no system for registering trade secrets, nor is there any federal law of trade secrets (in other words, what qualifies as a trade secret depends on the state in which your business is located).

Although the lack of a registration or filing process may lead one to believe trade secret protection is cheaper than patents, this is not the case. In fact, maintaining trade secret protection could require even more expense and effort than obtaining a patent. A court will only protect information as a trade secret if you can prove you treated and protected that information as secret.

Trade secret protection requires that you take actions to protect the subject information, such as the labeling of documents as confidential; limiting and tracking who has access to the information; establishing policies of confidentiality for employees that are embodied in employee handbooks, employment contracts and non-disclosure agreements for any non-employee with access to the information; and setting up systems to ensure compliance with your confidentiality policies. This last point is key, because if all of your systems and policies exist only on paper (with no efforts to ensure compliance), a court will likely find that you have not established trade secret protection for your information.

How is IP Protected?

So how does a company protect its IP? A good start is to conduct an IP audit, which is a review to identify any real or potential intellectual property assets. Besides identifying areas of potential IP protection (or exposure), an IP audit will help detect if your business has a lopsided IP strategy. For example, maybe your business has a good system for identifying inventions and patenting them, but no coherent strategy for protecting its brand (e.g., with trademarks). Or perhaps your business maintains a good IP portfolio but does not have a thought-out strategy for protecting IP assets in its employment and licensing agreements, or in its dealings with co-developers and subcontractors.

The first step in an IP audit is to determine your company’s present and future core technologies (the technologies underlying your present and/or future business plan), critical know-how (your company’s technical and marketing knowledge, which may include your formulations and manufacturing methods, and may be embodied in internal manuals or computer files or databases), and key brands (your company name; product names, design and packaging; or any other means by which your customers recognize you and your products).

Your IP strategy should be based on this “Big Picture” of where your company is and where it’s going. Set up an IP committee responsible for:
  • Monitoring and providing periodic reports concerning your company’s IP assets and IP issues;
  • Establishing and managing a system for recognizing, selecting and developing IP assets inside your company; and
  • Developing and implementing an overall IP strategy for your company, and ensuring that the IP strategy stays in tune with, and supports, your company’s business strategy.
In addition, you may want to task the IP committee with monitoring the IP assets of your competitors, as well as new technology generally within your industry.

Make sure you give your IP attorney the Big Picture. Clients often approach their IP attorney for the performance of one discrete task, such as registering a particular trademark, drafting and filing a patent application on a particular invention, or looking over a particular license agreement. In order to get full value from your IP attorney, the attorney should be informed of the overall IP situation and your thinking as to how that particular trademark, patent application or license agreement fits in. Your IP attorney is best suited to discover the hidden possibilities and pitfalls in your overall IP strategy, but will need a full understanding of the situation to do so.

Protect for Success

In the end, the best way to protect your intellectual property depends on the nature of your particular technology, product or service; the specific circumstances and situation of your company; your present and future business and marketing plans; and so on. With an understanding of the proprietary nature of your products, the types of intellectual property protection that may be available can then be determined with the ultimate goal of achieving and maintaining a commercial edge over competitors.

For more information regarding intellectual property protection, contact Cohen Pontani Lieberman & Pavane LLP, 551 Fifth Ave., New York, NY 10176; (212) 687-2770; or visit the website at www.cplplaw.com.

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