As a novice on the subject of our next workshop, “Patents, Trademarks and Copyright,” I sat down with our presenter, George Darby, registered patent attorney, to get some basic understanding of what these things actually are.
Dennis: First of all, how did you ever get into this pretty specialized legal niche?
George: It’s a long story. My path went from studying science at Johns Hopkins, to broadcast engineering and filmmaking at Maryland PBS, to graduate school at Harvard in physiology, and back to film work. In trying to combine my science and communication interests I discovered the East-West Center in Honolulu and bought a one way ticket to Hawaii, a place I had never been before. I soon realized I needed more tools than I had, so I got into the UH MBA program, where “ask legal counsel” was the answer to every other question I asked my management professor. So next up was UH Law School. After graduation I worked at Cades Schutte law firm where my passion for working at the intersection of technology, business and intellectual property strategies developed. So science, business and the law all combined to lead me to this field.
D: You’re right, that is a long story. Let’s cut right to something I hear all the time. What’s the deal with Chinese “knockoffs” and China essentially pirating U.S. trademarks on a regular basis?
G: It’s a big deal. Trademark registrations are only valid in the country that grants registration. In all other major countries except China you have to actually use a trademark in commerce to obtain a registration, but in China there is no such requirement. It’s like buying a domain name, a different type of cybersquatting.
D: You use the phrase intellectual property. What is that?
G: Intellectual property is an umbrella term for patents, copyrights, trademarks, publicity rights and trade secrets.
D: So help me out. I think I share with a lot of people confusion of which of these things is which.
G: A copyright protects a work of authorship, like a work of literary or visual art, including software. A trademark is a word, design, or other symbol that indicates the origin of goods or services. It can be an actual symbol like the Nike “swish,” the sound your computer makes when you get mail, or a slogan like “fly the friendly skies.” A patent protects any “novel, unobvious and useful” method, article of manufacture, composition of matter, or machine. Publicity rights are the right to use a likeness or other identifying characteristic of a person for commercial purposes; Charlie Chaplin’s unique walk is a publicity right. And a trade secret is basically an unpatented invention, like Colonel Sanders’ recipe. When you buy a franchise you are buying a bundle of intellectual property rights.
D: (I’m glad you mentioned franchises because our July workshop is on franchising — stay tuned.) So, in today’s rapidly changing and instant information age, have the uses of these protections changed?
G: Yes. You really have to consider your product’s lifespan or product lifecycle today to decide how you should protect your intellectual property. Is it really worth it to pursue a patent on something that has a short life cycle, like software or fashion, when it takes at least a year to obtain a patent? Maybe you should copyright or trademark some component of it, as these take much less work and time. If you’re talking about a vaccine, which has a longer lifespan, patents are still important.
D: So there really is a continuum of intellectual property protection?
G: That’s right. In the music business, you want to have trademarks, copyrights and publicity rights. In manufacturing, you want to have patents, trademarks and trade secrets.
D: So how difficult it is to register for these various protections.
G: There’s a range. A trademark is easy to register. You can do it on line and it basically costs $275 for one trademark. However, it looks simpler than it actually is. It’s best to have someone teach you how to do it because the website is like an unexplored cave for a newbie. At the other end of the range, a patent can take years.
D: How much does it cost to register a patent?
G: That’s like asking how much a house costs. How many bedroom, bathrooms, how big?
D: Who should be concerned about intellectual property?
G: Every small business needs to consider trademarks for brand protection and know how to recognize a patentable invention. What is a business but building up brand recognition? To do that you need to protect the brand.
Join us for our next workshop, “Patents, Trademarks and Copyright” June 9 at the Natural Energy Laboratory of Hawaii Authority in Kona. Register online at www.hisbdc.org or call 327-3680 for details.
Hawaii SBDC Network is funded in part through Cooperative Agreement No. SBAHQ-13-B-0048/0001 with the U.S. Small Business Administration and the University of Hawaii at Hilo. All opinions, conclusions or recommendations expressed are those of the author and do not necessarily reflect the views of the SBA. Reasonable accommodations for persons with disabilities will be made if requested at least two weeks in advance.
Dennis Boyd is director of the West Hawaii Small Business Development Center.