(1) file a lawsuit under the provisions of the Anti-cybersquatting Consumer Protection Act [ACPA]; or

(2) file a complaint under the international arbitration system created by the Internet Corporation of Assigned Names and Numbers [ICANN].

The ACPA defines cybersquatting as registering, trafficking in, or using a domain name with the intent to profit from the goodwill of a trademark belonging to someone else.  The ACPA allows trademark holders to file lawsuits against cybersquatters in the United States federal courts, and allows for the recovery of up to $100,000 per domain name in damages plus costs and attorneys’ fees.

The ICANN arbitration system may be faster and less expensive than suing under the ACPA.  When anyone registers a domain name under ICANN, that person submits to binding arbitration in the event of a dispute concerning that domain name, including allegations of cybersquatting.  This binding arbitration is conducted according to ICANN’s Uniform Domain-Name Dispute Resolution Policy [“UDRP”].  UDRP does not allow for the recovery of damages, costs, or fees.

Don’t work on your new venture while employed by another company in the same industry.

2. Don’t Use Infringing or Descriptive Trademarks.

Don’t use trademarks which merely describe your company’s products or services.

3. Ensure that both employees and contractors assign all of their IP rights.

You may not own what you pay others to create, so put assignments of IP rights in all employment contracts.

4. Obtain the copyrights to your website.

Obtain a written, signed copyright assignment for the design and contents of your website, and then register you copyrights.

5. Identify and Take Active Steps to Protect All Trade Secrets.

Not all information generated in business is protectable as trade secrets.  You must identify valuable business information as secret and then take positive steps to protect it from disclosure.

6.  To understand open source licenses

Determine whether any of your source code uses open source licenses, since restrictions may apply if you charge.

7.  To protect your IP when you are doing a joint venture

When you work with another company or developer on a joint project or product, it is important to use more than a handshake.  It’s important to know what to do to keep the lines of IP ownership clear or you may end up with the default legal rules that create a mess you never intended.

Arguments because of an initial lack of clarity can ruin even the best friendships.

8. Clarify ownership of all valuable IP before seeking financing.

Do an intellectual property audit.

9. File Tax Returns and capitalize trademark costs.

This is not a complete list.

See Trademark Weblog.

See Patent Weblog.

The U.S. rule provides applicants with a 1-year grace period for filing a patent application after public use or disclosure.  However, foreign jurisdictions may not allow any delay, so file patent applications sooner rather than later.

Many issued patents are not valuable because their claims are narrow and thus may be easily avoided.  The language of the claims should broadly define novel concepts, including potential design-arounds as well as reverse engineering.

Knowledge or willful ignorance about an issued patent may create legal liability, including treble damages.   So management should avoid making internal communications that may evidence knowledge of existing patents.  Once a patent is known, everyone must be careful.

Copyright protection in the U.S. and many other countries arises upon creation, however copyrighted material is vulnerable to reverse engineering.  After an idea has been reverse-engineered, there is no copyright protection.

6. Be Aware of Festo.

The Supreme Court (Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd) changed the legal effect of amending patent claims, particularly upon the effective scope of amended claims. This judicial change cannot be ignored without impairing the  commercial value of many issued U.S. patents in which applicants introduced explicit arguments that distinguish various prior-art cited by the Patent Examiner.

Use Non-Disclosure Agreements (NDA) and in-house policies and systems to secure confidential and proprietary information rises.

Having a trademark as a capital asset is useful in litigation since the capitalization shows investment of time, money, and effort in creating and protecting the trademark.

See Patent Weblog.

MGA Entertainment v. Mattel.

In re Bilski.

1. Copyright s protect literary, dramatic, musical and artistic works, including software.
2. Copyright law protect on the expression of an idea–not the idea itself.
3. A copyright provides the owner the exclusive right to copy, adapt, modify, distribute, display and
   publicly perform the copyrighted work.
4. A copyright notice (c) together with the name of the copyright owner and the date of creation put others on legal notice that a particular work is copyrighted.
5. Registration of a copyrighted work is not required for copyright protection, but is required in order to bring a copyright infringement lawsuit.

See Copyright Weblog.

• Trade secrets apply to any information, devices, techniques, designs, processes, compositions, and formulas which are not generally known to the public.
• Trade secrets must give their owner a competitive business advantage.
• Once a trade secret becomes public, all protection is lost.
• Trade secret law protects owners against the unauthorized use or disclosure of their trade secrets by others.
• The owner must use reasonable efforts to maintain the secrecy of the information, including using nondisclosure agreements with third parties and  employment agreements.
• Third parties and employees must be required to keep trade secrets secret.
• Trade secret protection does not protect against independent discovery.

Patent law protects inventions consisting of a product or process. A patentable invention must be novel, useful, and non-obvious.

An invention is novel if it is different from what is known to the public.  There must be no prior art, i.e. the invention must not have been previously invented by somebody else and must not have been described in a printed publication, offered for sale in the U.S. or in public use in the U.S. more than one year prior to the filing of a patent application.

An invention is useful if there is a current beneficial use of the invention or, if the invention is a process, a beneficial use of the product of the process.  The invention need not be better than the available alternatives.

An invention is non-obvious if it is not obvious to a person having ordinary skill in the relevant art or the field of the invention as it existed at the time the invention was made.

To qualify for a patent, a process must either be tied to a particular machine or transform one kind of thing into a different state or thing, e.g., manipulating data corresponding to an X-ray.

An invention may be protected as a trade secret (discussed below) if it has been maintained in secrecy.  It remains a trade secret when described in a patent application filed with the U.S. Patent & Trademark
Office (“PTO”). Patent applications are kept secret with the PTO until they are published eighteen months after filing.
U.S. patent protection lasts for twenty years following the date the patent application is filed.

Patent protection in other countries may be initiated by filing a single Patent Cooperation Treaty (“PCT”) application, which is subsequently prosecuted on a country-by-country basis where protection is sought.

Another invention or product, process or system infringes a patent if it contains all of the elements described in a single claim of the patent.

See Patent Weblog.