Expert Commentary

Protect Assets and Limit Liability: Three Things To Consider When Launching a New Product

In today's marketplace, intellectual property rights are often a company's most valuable assets. Accordingly, protecting your intellectual property assets and limiting your liability for infringement of another's intellectual property rights may be critical to the success of your business. Indeed, there is nothing more disappointing than investing significant time and money into developing and launching a new product only to discover that your intellectual property rights are not protected or, even worse, that you infringe someone else's intellectual property rights.


Intellectual Property
April 2011

To alleviate these concerns, we propose three steps that you may consider before launching a new product. First, we suggest that you conduct a trademark search to evaluate the potential infringement concerns surrounding the product's proposed name. Second, you should file a trademark application for the mark. Third, assuming your product relates to a technological or scientific innovation that may be eligible for patent protection, you should conduct a patent search to confirm that your new product does not infringe another company's patent.

While we believe the first two steps are applicable to most types of business, the third step relating to the patentability of an invention may only be appropriate for those companies engaged in technological or scientific innovation, research, and development.

Step 1: Conduct a Trademark Search

A trademark is any word, name, or symbol used to indicate the source of goods or services. The first person or entity to use a mark in commerce obtains trademark rights to that mark irrespective of whether that person or entity has registered the trademark. Therefore, before you invest substantial time and resources into developing a name and market recognition for that name, it is important to evaluate whether anyone else is already using the mark in commerce for the same or similar goods.

The common misconception is that you only need to search trademarks that are federally registered with the U.S. Patent and Trademark Office (USPTO). To the contrary, you should search the federal registers, the state registers in which you plan to use the mark, and the Internet for common law uses of the mark. While you may conduct this search on your own, it is advisable to hire an experienced trademark search firm to conduct a thorough search.

Step 2: File a Trademark Application

If you are confident that your proposed mark is not already being used in commerce to identify the source of the same or similar goods or services, then you should file a trademark application. At this juncture, you may not be using the mark in commerce, but this does not prevent you from filing a trademark application. Indeed, you can file a section 1(b) intent-to-use application with the USPTO. What this means is that you have a bona fide intention to use the mark in commerce within 6 months of your trademark application being allowed. If you are already using the trademark in commerce, you can file a section 1(a) trademark application and attach a specimen that shows the mark being used in commerce to identify the source of goods or services.

Step 3: Conduct a Patent Search

If your product relates to a technological or scientific invention, you may want to consider seeking patent protection for such a product. A patent is a property right granted to an inventor to exclude others from making, using, or selling his or her claimed invention for a period of 20 years after filing a patent application. Importantly, a patent does not grant the right to make, use, offer for sale, sell, or import an invention but only grants the right to exclude others from doing the same. See 35 U.S.C. § 271(a).

An inventor may obtain a patent for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof ... " See 35 U.S.C. § 101. As discussed, not all companies will seek patent protection for their products. Therefore, not all companies will need to conduct a patent search to determine the likely patentability of a newly developed product. Indeed, this is likely only appropriate for those companies engaged in technological or scientific innovation, research, or development.

Assuming your product relates to a technological or scientific invention, we suggest that you conduct a patent search prior to seeking patent protection to evaluate whether someone else may have already invented or publicly disclosed your invention. The U.S. patent system prevents an inventor from obtaining a patent if "the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the application for patent." See 35 U.S.C. § 102(a).

Further, an inventor may not obtain a patent if "the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the inventor's patent application." See 35 U.S.C. § 102(b).

Therefore, it is advisable to conduct a patent search to evaluate whether a prior public disclosure or use of your invention could prevent you from obtaining a patent. A patent search is not mandatory before filing a patent application, but it is advisable. See "All About Patents." While you can conduct the search yourself, it is advisable to hire a patent search firm or a registered patent attorney or agent.

Conclusion

Protecting your company's intellectual property assets and ensuring that you do not incur the burdensome costs of litigation by infringing another's intellectual property rights may be critical to the success of your business. To that end, before launching a new product, we propose that you consider the following three steps:

  1. Conduct a trademark search.
  2. File a trademark application.
  3. Conduct a patent search.

As discussed, the third step may only be appropriate for those companies engaged in technological and scientific innovation. While completing these steps will not ensure that you will not infringe another's rights or even that your intellectual property will receive federal protection through a patent or a trademark, we believe that these steps will provide you with the opportunity for success.


Opinions expressed in Expert Commentary articles are those of the author and are not necessarily held by the author's employer or IRMI. Expert Commentary articles and other IRMI Online content do not purport to provide legal, accounting, or other professional advice or opinion. If such advice is needed, consult with your attorney, accountant, or other qualified adviser.

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