Frequently Asked Questions

Not negotiating who's going to be responsible to solve problems when they inevitably show up.

You need to make concrete steps towards keeping that secret a secret.

You have to inform everyone who's using the system and you have to fix the breach. You might also be on the hook for anything which happened in your customer's systems due to the breach, but that's going to depend on a number of factors.

You can, but you're not technically allowed to. People do it all the time and they don't tend to get in trouble for it, so you're probably safe. But lawyers are in risk-mitigation so I would recommend you don't. I know. I'm a killjoy.

Yes, but you're still responsible for the problems when they show up.

Yes, but try enforcing it.

This is called a "beta test agreement" and they're very common. In fact, we strongly recommend using them at all possible times to preserve your rights for filing a patent application later (should you choose to).

They have to tell you it happened and fix the breach. Of course, you were supposed to be responsible enough to be aware of potential problems as well, so it's hard to say if you're going to be able to ask for more than that if you were made aware when they informed you instead of being aware of it on your own.

Not really. We're currently fighting about the extent of that "not really" right now.

It's actually the same answer regardless of what type of IP you're looking at - you have a contract and you follow what the contract says. Now, how do you come up with the system the contact spells out? Negotiation. Long, hopefully pleasant, negotiation.

It depends on what's in your employment agreement, but it can anything from not a big deal to "you're about to be in trail for months."

12-15K from the time of disclosure to the time of filing. Then another $12-15K to argue with the USPTO. There are also some costs the office charges which I can’t predict because they change them (usually in October). I can say they don’t tend to go down. After that there are maintenance fees at 3.5, 7.5, and 11.5 years in. Those are also set by the USPTO. International patents cost more because 1) you need to pay for translation and 2) different countries have different fee structures.

Litigation costs depend very much on what issues you bring to court. Costs for copyright lawsuits will likely be very different from costs for patent lawsuits.
There are two currencies you have to care about – money and time. Patent litigation can take 2–3 years and cost as much as 3–5 million dollars if the case goes all the way to trial. (Most cases settle beforehand, though.) Copyright litigation is comparatively “cheap” at only...
Another important cost is the time and attention your engineers and executives will have to allocate to the litigation (in addition to time and attention billed and charged for by lawyers). This takes valuable people away from real work on the business, all while competitors are trying to outshine you in the market.
And litigation is still very risky. You can have a stellar case and still lose, or only win after a protracted trial and appeal. We generally suggest that litigation should only be engaged in very cautiously, at least for small companies.

The right to privacy, sometimes called the “right to be let alone,” includes such rights as the right not to have one’s personal affairs disclosed/publicized. It is supposed to prevent others from using your private affairs for their own benefit, such as by invading your home, intruding on your private affairs, or publicizing your private information (without a legitimate public interest).
Some states (such as California) have additional protection to protect consumer privacy and to protect against excessive data gathering by websites.

The right to publicity is the right to right to control the commercial exploitation of certain aspects of your public image, usually focused on your name, image, or likeness. It can also apply to other aspects of your public image, such as the sound of your voice or an iconic TV pose. The scope of this right varies from state to state. It might be strongest in states with a thriving entertainment industry (California and New York), but other states (Minnesota and Tennessee) do also protect this right.
This right is limited to commercial exploitation, such as advertising a movie as starring a particular actor, or advertising a product as approved by a particular celebrity (or non-celebrity). It does NOT generally allow anyone to limit what can be said about them in the news or by fans.

To protect trade secrets and confidential information, one essential element is that the material is actually kept a secret, at least from the general public. An employer (or anyone else) who wants to maintain their trade secret will want you to promise to maintain the confidentiality of their trade secrets. You will see this as part of a nondisclosure agreement or a nondisclosure provision in another agreement, often called an NDA or a confidentiality provision.

Copyright infringement is limited by a concept called fair use. A use of a copyrighted work is called “fair use” if it is technically a copyright infringement but the courts consider that the use should not really be regarded as an infringement. The fair-use defense generally measures 4 factors, of which one is “the purpose and character of the use, including whether such use is of a commercial nature”.
If the use is considered “transformative”, it can go a long way toward showing that the use is a fair use. Examples include parody or satire, where the use of the copyrighted work is to present a different or even an opposed message, or to make fun of the copyrighted work or its author. There is no bright-line test; it depends on whether courts feel the use is so different from the copyrighted work that the use should be allowed despite the copyright.

There are usually 2 or 3 parts to the typical “IP clause” you might find in your employment agreement. These relate separately to (A) inventions and patents, (B) trade secrets and confi-dential information, and (C) copyrights.
As to inventions and patents — in general, inventions belong at first instance to the person who made the invention, and (amazingly, to some people) NOT to their employer. Employers naturally want to lock down those rights, so they will require you to assign those rights to your employer.
As to trade secrets and confidentiality — one essential element to trade secret rights is that the material is actually secret. In general, employers will want you to promise to maintain the confi-dentiality of their trade secrets and confidential information. You will see this as part of a non-disclosure agreement or clause, often called an NDA.
As to copyrights — In some cases the employer will obtain the copyright in what you create for your employer just due to your employment. When this is not the case, the employer will require you to assign those rights to them. In some cases, the employment agreement will recite that what you create is a “work made for hire”, a legal copyright term

Each country has a government office which evaluates whether your patent application should be granted. In the US, this is the USPTO (United States Patent and Trademark Office). The USPTO assigns a Patent Examiner to read and evaluate your patent application. You have an opportunity to argue or negotiate with the Examiner, you can appeal internally within the USPTO, and you can ultimately appeal to the Courts. The Courts can also declare an issued patent invalid if the invention is found to be obvious or otherwise unprotectable by law.

If all you care about is cost, you can write the application and negotiate with the USPTO yourself. But this will take time and effort, and you are likely better served by asking a professional (a patent lawyer) who has experience with best practices for working with the USPTO.

In general, without a patent, you will be unable to prevent people from copying a product you manufacture and sell, or a service you provide to the public. While the product or service is being developed, you might be able to protect the idea that gave rise to it using trade secret protection. For example, when attempting to look for investors or when engaging with developers, you can request that people sign a nondisclosure agreement (NDA) by which they promise to keep your new idea a secret.

In general, it is not easy and it is quite expensive to enforce a patent. If someone is infringing your patent, you will have to convince them to stop, and if you cannot, you will have to convince a court to make them stop. A patent lawsuit can take over two years just to bring to trial, and can cost several million dollars. There are lenders who might be willing to fund your lawsuit, and there are attorneys and law firms who might take the case on “contingency” (you pay them only if you win, but generally more than if you were paying them unconditionally), but it will likely also take a great deal of time and effort.

Yes. Copyright can cover a variety of things, including text, drawings, photographs, and code (including both source code and object code).

Recent rulings by the Copyright Office have said that AI-generated works are not copyrightable, so you might have to have written the code yourself. It is even possible to have a copyright in code that you maintain as a trade secret, so long as (a) you actually maintain the code as a secret. See the discussion of what is needed for something to be a trade secret.

Trade secrets vary in their definition from state to state, so there is no single definition. But in general, a trade secret can be anything you know that (A) provides a business advantage, (B) is not generally known in the industry, and (C) for which you have taken reasonable steps to keep secret. In most states, the trade secret need not be particularly inventive or novel, so long as it is not generally known in the industry. A famous example is the method for making Coca-Cola. Something cannot be a trade secret when it is impossible to keep secret, such as what the parts of a product that you distribute to the public, since anyone can take the product apart and find out the secret.

Yes. But you still must make reasonable efforts to keep it secret, so you will likely have to impose some rules on your licensee that require them to keep your trade secret from being publicly disclosed.

Defamation (libel or slander) occurs when you publish a statement about someone that is both (A) false, and (B) holds them up for public obloquy or ridicule. “Libel” generally refers to written statements; “slander” generally refers to spoken statements. The 2nd half is quite broad; it is possible to defame someone by calling them a liar, or by saying they have acted unprofessionally, or even that they have a loathsome disease (AIDS might qualify). However, the statement generally has to be false, so a personal opinion, or a statement which is not really a true/false statement, would not qualify. Example: “That restaurant isn’t any good.” And some statements which are literally true/false that are not regarded as defamatory because they are considered hyperbole, parody or jokes.

In the United States, trademark rights arise from using the mark with goods or services in interstate/foreign commerce. You can apply for a trademark when you think of the mark, but it will not be registered until you can show you have been using it. Or you can delay applying to register the mark, and you can register it later when you determine the mark is worthwhile.
In general, it may be valuable to register a trademark only when you are starting to market a product or service with that mark. It can make sense to wait until the product and its mark are relatively popular, or it can make sense to register early if you expect more than one product to be associated with the mark (such as if you are using your company name as the mark). Early registration is better for legal protection, but you likely do not want to waste money on marks you are not sure you will be using later.