Learn how to protect trade secrets, copyrights, trademarks, and patents, as well as the rights and limits of each one when intellectual property attorneys Jim Duncan and Ronnie Capaldi from Young Wooldridge join SBDC director Kelly Bearden on this week’s free webinar.
This marks the 382nd episode of the “Webinar Wednesday” business series that provides news and information helpful to employers and business owners.
The CSU Bakersfield SBDC provides free one-on-one help to small business owners. New and existing businesses can go to https://csubsbdc.com/ for more information or to sign up to meet with a business advisor at no cost.
TIMESTAMPS
00:00 Intro
5:29 Capital Corridor
– How IP Increases Business Value
– IP increases business valuation beyond tangible assets like equipment & inventory
– Strong IP attracts investors, strategic partners & acquisition opportunities
– SpaceX acquired Cursor (AI coding software) for $60 billion after just 2.5 years
9:08 Economic Corner
– Federal Reserve Holds Rates Steady
– Kevin Warsh’s first Fed meeting: rate hike now more likely than a cut
– SBA 7A & guaranteed loans are variable rate, adjusting quarterly with the prime rate
10:56 CSUB SBDC YouTube: 548 subscribers | 330+ videos on demand https://www.youtube.com/@csubsbdc Harvesting Intangible Assets https://youtu.be/HhGm33IuxB0
15:41 Kelly introduces Jim Duncan & Ronnie Capaldi, Young Woolridge Law https://www.youngwooldridge.com/
20:32 What Is Intellectual Property?
– 5 Categories Overview
– IP = creations of the mind: inventions, artistic works, designs, symbols & names in commerce
– Five silos of protection: trade secrets, copyright, trademarks, patents & software
21:38 Trade Secrets
– Formula, pattern or information with economic value derived from secrecy
– Must be actively maintained as secret; independent development by others is still legal
– Examples: Coca-Cola recipe, KFC’s 11 herbs & spices, customer lists, proprietary software
– Employees with access must sign NDAs
23:46 Copyright
– Protects original works fixed in a tangible medium (written, photographed, recorded)
– Protection begins the moment the work is created; administered by the U.S. Library of Congress
– Individual works: 70 years after author’s death | Works made for hire: 95 years from first publication
– Register early: pre-infringement registration unlocks attorney’s fees & enhanced damages
27:02 Trademarks – Source identifier: distinguishes your brand; drives purchasing decisions
– Trademark rights last indefinitely as long as the mark is in use & registration is renewed
– ® only for USPTO-registered marks; TM or SM can be used to claim rights without registration
– “Confusingly similar” is a jury question
— even misappropriating the most memorable part of a mark can trigger infringement
– Beware “genericide”: Kleenex & Xerox nearly lost their marks by becoming synonymous with the product
– Spectrum of trademark strength: coined words (strongest) → arbitrary → suggestive → descriptive → generic (weakest)
37:06 Patents – Types & Overview
– Three types: utility (strongest, protects function), design (protects ornamental appearance) & plant patents
– Apple’s design patent on iPhone shape won infringement case against Samsung
– Utility patent protects function: right to exclude others from making, using, selling or importing the invention
– Patent has three parts: drawings, written description & claims (the legal definition of the invention)
42:25 The Patent Application Process
U.S. Patent Office https://www.uspto.gov/
– Provisional application: establishes priority date; must be followed by non-provisional within 12 months
– Non-provisional application: enters examination queue — currently ~24-month wait at the USPTO
– Inventors 65+: eligible for accelerated examination (within 12 months)
– Patent published 18 months after priority date; non-publication can be requested if not seeking international protection
– Patent term: utility & plant = 20 years from filing | design = 15 years from issuance
47:00 Patent Examination & Office Actions
– Examiner reviews claims for novelty & non-obviousness against prior art worldwide
– Office action issued if rejected; response required within 3 months (extensions available)
– Missing a deadline = abandonment; strict rules enforced
– Final refusal can be overcome by filing a Request for Continued Examination (RCE)
– Cannot be patented: perpetual motion machines, nuclear weapons, natural organisms (some gene-spliced exceptions)
53:43 International IP – PCT (Patent Cooperation Treaty) https://www.wipo.int/en/web/treaties/registration/pct/index
– File internationally within 12 months of your original U.S. provisional application
– Must provide enabling disclosure: sufficient detail for a skilled person to make & practice the invention
– Patent protection is territorial: U.S. patent does not stop manufacturing or sales in other countries