Protecting your assets
10 Tips to Protect and Pass on Your Intellectual Property
Every period in history has produced its innovative thinkers. First there were the inventors of the early tools and materials that helped us clothe, feed, work and build more efficiently. Centuries later the transportation and manufacturing inventions of the industrial revolution—from the revolutionary steam engine to the production efficiencies of Henry Ford's assembly line—brought our world closer together and gave us more time to enjoy it. And today, the rapid-fire proliferation of digital advances allows us to communicate in real time.
Whether functional or aesthetic, their original works give us the “assets of the mind” we need to do more with less much more quickly and inexpensively or in a more educational and entertaining way. In turn, they have certain rights of ownership, and their intellectual property rights need to be protected so that their work can be successfully monetized for the benefit of both the creator and their beneficiaries.
Today, the protection of these assets is backed by the intellectual property (IP) rights developed by the U.S. patent system. IP law is based on the premise that, when creators know their work will be protected and they can benefit financially from their labor, they are more likely to continue to produce for the overall good.
Granted in 1790 by Thomas Jefferson, the first U.S. Patent was awarded to Samuel Hopkins of Vermont for “making pot ash and pearl ash by a new apparatus and process.” According to a recent report from the U.S. Patent and Trademark Office, IP-intensive industries account for more than $6.6 trillion in value added to the economy and 45 million U.S. jobs.
This massive investment in R&D warrants a complementary investment in IP protection, with the world's most proactive innovators, including Google, Microsoft and Apple, spending billions of dollars annually on intellectual property protection.
Types of intellectual property protection
Every invention generally starts out as a trade secret. Before inventors can successfully market their inventions, they need to secure one or more forms of intellectual property protection available in the U.S.—copyrights, patents and trademarks. If they do not perform this due diligence, they risk having their original work copied and its value diminished.
To best protect your intellectual property, you need to know which type of protection is most effective for your particular innovation. In some cases, it might be to your advantage to apply for more than one type.
Today's copyright law protects written works, photographs, paintings, sculptures, films, computer software and “original forms of expression,” like the creative concept of the “Star Wars” films and the script for “Fiddler on the Roof.” The creative work has to be written down on a piece of paper, saved on a device (hard drive or flash drive) or recorded in some other tangible format. Copyrights protect the owner as soon as the work is fixed in a tangible medium. Over the span of U.S. patent system history, the kinds of works to which copyright law applies has grown enormously. For example, in 1884, the Supreme Court concluded that photographs could be copyrighted. In 1971, Congress decided that musical recordings should be protected. In the 1980s, computer software was first added to the list of protectable works—and the most recent major addition to the list was architectural works.
Patent law protects inventions—the microwave oven, chemical processes, and genetically engineered mice. They are most commonly classified as either utility patents or design patents. If you describe your invention to others in terms of its function, or utility, a utility application would be most appropriate. If you describe it in terms of its aesthetics, a design application would be the best protection. The design patent protects the ornamentation, sculpture, pattern design, layout and other aesthetic features of your innovation.
If, however, you describe your invention in terms of both its utility and design qualities, you might be advised to apply for both types of patents. Software is a good example of this as it is functional, but can also be considered creative in its selection, ordering and arrangement of pieces of code.
Like copyright, patent law was gradually extended over the course of the nineteenth and twentieth centuries to include an increasingly wide array of inventions.
Trademark law protects words and symbols that represent goods and services, such as “McDonalds” or the distinctive swoosh of the Nike logo. Trademarks have no expiration date as long as they continue to be used and renewed.
Although copyright and patent law have grown substantially over time, the explosion of intellectual property has been most striking in trademark law. The idea that a manufacturer who places a distinctive mark on his products can prevent others from using the same mark to sell similar goods products first appeared in American law in the second half of the nineteenth century. For many years, however, the kinds of marks protected by this principle were limited. Initially, for example, most courts insisted that, to be protected, a trademark had to include the name of the manufacturer. Arbitrary or fanciful names and geographical names did not qualify.
Gradually, these restrictions were lifted. By the end of the century, courts were willing to protect arbitrary names, symbols, and geographic names provided they had acquired “secondary meaning”—or come to be associated with particular products in the minds of the consumer.
10 steps to protecting your intellectual property
Whether inventor, artist or owner of a closely-held business, your intellectual property is a valuable asset. To retain that value, it needs to be protected from pirated use without your permission, as well as carefully considered as part of your estate plan so that it goes to your beneficiaries of choice.
Although certain IP rights are automatic and legal remedies are in place to protect you, it is still up to you to manage and maintain the process. Here are the steps you need to take:
1. Your strongest protection is to register all your IP assets early:
2. Keep your secret ideas or inventions just that—secret. Avoid talking about them in public places, especially airports, and give only the necessary information to outsiders, such as investors and lenders.
3. Use non-disclosure agreements before sharing any information. If this is not possible to achieve your objective, such as presenting to an investor, at the very least include a confidentiality agreement as part of your business plan.
4. Educate yourself on IP—and pass it on. It is critical that every employee or family member named in your estate be aware of the intellectual property you own, and educated on the strategic importance of protecting that property. Make sure everyone understands the different types of IP and the costs and strengths of each.
5. Evaluate your ideas. Effectively protecting your IP can get expensive, so it is good due diligence to conduct a full audit, assign a book value to each property, and prioritize it in order of securing legal protection.
6. Create a paper trail—and document everything. This can serve as proof of your idea if challenged in court one day. Make sure to include relevant dates where possible because the first date of use is critical in legal matters.
7. Establish an IP portfolio by conducting regular audits, including expiration and renewal dates and royalty payments. Surprisingly, a large number of firms pay for licenses to protect their technologies, only to let them lapse.
8. Decide how you want your IP managed during your lifetime and make sure this is reflected in your estate plan documents. For instance, do you want it to generate income for you now and then be passed on to your family after your death? Or do you want it to be sold while you are still living?
9. Decide how you want your IP managed after your death and also make sure this is reflected in your estate documents. Do you want it to be transferred through lifetime gifts or as a bequest after death to a list of beneficiaries chosen by you? Have you named those beneficiaries in your will?
10. Get your IP appraised. Patents, copyrights and trademarks can be highly valuable and a professional appraisal needs to be conducted before that value can be monetized and properly accounted for in your estate plan.
Unprotected IP can cause delays, grievances and monetary loss to your estate
As we know from press reports, Prince and Aretha Franklin shared more than iconic voices. Neither performer had even the most essential estate documents, including a will or a trust.
Because neither documented their intent relative to the distribution of their IP after their lifetimes, their finances will become public in probate court. This means that their IP might not go to the person(s) intended, and might not be managed in a manner that will protect it and maximize its value. In the case of Prince's estate, it has hung in limbo for over two years, while the IRS and estate executor agree on the value of the estate when Prince died. According to a recent article, none of his heirs has inherited any portion—not even a penny —of his estimated $200 million estate leaving family members frustrated. Additionally, while public filings don't disclose how much the estate has paid the IRS and state of Minnesota to date, the executor and its lawyers have already collected approximately $5.0 million in fees and expenses and they have requested more. All of these and administrative and legal fees are diminishing the assets of his estate.
We can help
If you own intellectual property, you know how much time and specialized knowledge it takes to ensure that its value continues to grow and it is well protected from infringement. At The Private Bank, our dedicated team of experienced specialists can provide oversight and management of your intellectual property from the registration of your work to the distribution of your estate.
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This material is intended solely for informational and educational purposes, and is not intended for use as the basis for legal or tax advice or to be considered an opinion and does not contain a full description of all facts or a complete exposition and analysis of all relevant circumstances.