Coming up with fresh ideas that translate into products or services is the lifeblood for inventors and creators. However, it can be costly to protect one’s intellectual property, particularly if the item is not yet generating revenue. Patents in particular have multiple stages, which translates into extensive costs. However, there are some alternative intellectual property protection strategies that could be used, either as a temporary or possibly permanent means of starting a portfolio of your IP.

First, let’s lay out a standard glossary of terms for the various types of intellectual property protections available: 

• Patent: “A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office.” There are three types of patents, as per the USPTO**:  
• Utility patents: discovery of a useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
• Design patents: discovery of a new, original, and ornamental design for an article of manufacture; and
• Plant patents:  invents or discovers and asexually reproduces any distinct and new variety of plant. 

• Trademark: “A word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others.”

• Copyright: “Protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished.”

• Trade secret: Something used in a company’s business that (a) is not known or readily accessible by competitors, (b) has commercial value or that provides a competitive advantage in the marketplace, and (c) the owner of the information protects from disclosure through reasonable efforts to maintain its secrecy.

Obtaining a Copyright Before a Patent 

Generally speaking, patents and copyrights protect different things. However, in some situations, a copyright may be obtained on its own, or also to complement the protection of a design patent. This is possible if the item being created also has an “ornamental” element or unique aesthetic design, and is recognized as a work of art. For example, some musicians have created new types of guitars, which may also have unique looks, such as Eddie Van Halen’s “Frankenstrat” model. A design patent protects the design of the guitar, and a copyright could be secured for the artistic pattern and color scheme. Fun Fact: Eddie Van Halen secured a copyright on the “Frankenstrat” in 2001. 

Obtaining a Trade Secret Before a Patent

An inventor may want to think about protecting an asset as a trade secret before a fully fledged patent. It can seem a bit contrary to one another—a patent will offer strong protection for a creation, but this will only last 20 years. Such protection is secured by disclosure of the components; hence, why drawings and related specifications are included with a patent application. 

A trade secret is, of course, secret. It costs less, but is also a riskier form of protection, with the nature of the protection found in “keeping the secret.”  The owner of the information must take steps to protect the disclosure of information, such as utilizing non-disclosure agreements. 

That said, trade secrets–while viable–provide less secure protection because there is no bar against reverse engineering a process. If it’s fairly easy to discover how the innovation works, trade secret protection won’t be enough.  

Obtaining Trademarks 

 According to the USPTO, trademarks may be used in a design patent application in “limited circumstances.”  While this won’t be discussed in detail here, the Manual of Patent Examining Procedure provides guidance on this in section 608.01(v), which can be found here.

There may be components of an innovation that creators want to protect that  don’t involve disclosure of how the product is made. Perhaps a great brand name has come to mind, and the inventor wants to ensure no one else uses it.  You may file a trademark to protect the catchy name or slogan, even if the product is currently not being sold. This can be accomplished by filing the mark with an “Intent to Use” basis. Be careful that the mark does not disclose anything about the product, though, as this could affect trade secret protection. 

When to Make Patents Priority

Even with all these strategies, there may still be situations in which the best option is to file for a patent as soon as you can. Creators should think about these questions as they embark on their journey:  

• Is the invention something that will be useful beyond 20 years? 
• Could another person or company reverse engineer the process? 
• Will someone discover or invent the same process in the near future? 
• Are aspects of the process or the product itself seen and/or observed in public settings?  

Patents are similar to other types of intellectual property—first to file will prevail. If the invention is fairly easy to reverse engineer and it seems like someone else could also develop the process, it would be wise to move forward with the patent as soon as possible. 

**All definitions above from the USPTO, found here: https://www.uspto.gov/patents/basics/general-information-patents

Further Reading Related to ‘Cost Effective Strategies for Launching an IP Portfolio’

5 IP Legal Agreements You Should Know About + Templates

How (and Why) to File a Provisional Patent Application

Comprehensive Intellectual Property Resource Guide

Disclaimer: Nothing in this article shall be construed as legal advice, or as creating an attorney/client relationship.

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The Michelson Institute for Intellectual Property, an initiative of the Michelson 20MM Foundation, provides access to empowering IP education for budding inventors and entrepreneurs. Michelson 20MM was founded thanks to the generous support of renowned spinal surgeon Dr. Gary K. Michelson and Alya Michelson. To learn more, visit 20mm.org.