SEMA News - January 2010

By Stuart Gosswein

SEMA Webinar Guides Member Companies on How to Obtain Patents, Trademarks and Copyrights

  Obtaining a design patent can cost between $3,000–$10,000, depending on the complexity of the claim. Courtesy of Knobbe Martens Olson & Bear LLP
Any good idea or product is worth protecting—especially if it’s the mainstay of your business’ success. However, the process of protecting your intellectual property (IP) may seem daunting. To help explain the procedures and ease the complexity for SEMA-member companies, the association recently hosted a webinar entitled “Patents, Trademarks and Copyrights: Ask the Experts.” It was presented by Steve Lustig of Dickinson Wright PLLC; Robb Roby of Knobbe, Martens, Olson & Bear LLP; and Merritt Blakeslee of The Blakeslee Law Firm.

The webinar provided guidance on the different types of “intellectual property.” The main categories include:

Copyrights: Protect creative expression (e.g., website design, software, catalogs, pricing sheets, advertising, etc.).

Trademarks: Protect words, names, symbols, sounds or colors that identify you as the source of your goods or services, and distinguish them from those manufactured or sold
by others.

Patents: Protect an invention or discovery of any new and useful process, machine, manufacture or composition of matter (utility patent) or protect ornamental features (design patent).

Trade Secrets: Protect a formula, program, device, process or other confidential information which provides an economic advantage over a competitor or customer.

The webinar explained why companies establish a line item in their budgets to protect IP assets. It provided guidance on the value of working with an attorney to review those assets, prioritize efforts and establish a long-term strategy for registering IP rights and enforcing those rights.

The first question that typically arises in protecting IP rights is how much does it cost to register? The costs and procedures for registering a copyright, trademark or patent are unrelated and vary in complexity.

Steve Lustig, an attorney specializing in copyrights and trademarks, advised members to budget $500–$1,000 to apply for a copyright registration with the Library of Congress. “For trademarks,” he said, “I recommend budgeting $1,500–$2,000 to file an application with the U.S. Patent & Trademark Office (PTO). That amount should cover the application to register a simple trademark. If it takes multiple office actions to complete the registration process, a company should budget an additional $3,000–$5,000.”

According to Lustig, copyrights can be issued in a matter of three to four months now that the Library of Congress has
started to use a more sophisticated electronic system.He noted that the length of time to register a trademark varies according to circumstances. “The process may be completed in 18 months or less if the mark is already in use and easily distinguishable. It could take much longer if the examining attorney at the PTO detects conflicting marks, challenges the mark as being merely descriptive or raises other issues.”

Robb Roby outlined the budget parameters for patents, noting that, “The patent application is a large investment due to its complexity. It also triggers a number of PTO fees and examination costs, along with attorney fees.” Roby estimated that a utility patent would cost $10,000–$15,000 for a simple invention. For a more complicated invention, he noted the cost can increase to $30,000–$40,000. In comparison, design patents are less expensive. “They can be $3,000–$5,000 for most,” he said, “and $7,000–$10,000 for more complicated design patents.”

The time to obtain a patent depends on a number of issues. “Most utility patents take three years or so,” said Roby. “Some may go through much quicker, perhaps in as little as 14–16 months. However, I would say you are generally looking at years rather than months or days.” For design patents, it usually takes a year or longer.

Merritt Blakeslee provided guidance on how to enforce IP rights after the property is registered. The advice included tips on self-policing (e.g., conducting Internet searches and monitoring retailers, competitor’s websites/catalogs, trade shows, etc.), protecting the company’s supply chain and using contracts to shield against infringement and non-performance. Blakeslee observed, “There are a variety of enforcement actions available at all price levels. A first step may be to work directly with online marketplaces, such as eBay and, to remove postings offering goods that infringe your intellectual property. Recording your copyrights and trademarks with U.S. Customs and Border Protection as a mechanism to stop the importation of infringing products is another example of proactive enforcement. Sometimes a cease-and-desist letter will resolve a dispute. Other times, it is necessary to pursue legal action in a federal court or before the International Trade Commission.”

One question posed during the webinar concerned whether hiring an attorney is necessary. “With trademarks, you don’t want to make too many mistakes because you can wind up spending a lot of money for nothing,” said Lustig. “You probably do want to consult with an attorney just to hash things out.” This sage advice applies to all forms of IP.

No one ever said that protecting a business is simple, but with experts guiding you through the process, you can minimize wasted effort and keep your intellectual property in your sole possession.

To download a PDF and an audio version of this webinar, visit SEMA's webinars homepage. SEMA members may access all past webinars free of charge. 


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