An Industry Watch + features a collection of stories, Q+A's, How-To's and more to give readers a 360 degree look at industries.
This month's Industry Watch + takes a closer look at the topic of cybersecurity, featuring methods for protecting your intellectual property, a guide to the legal safeguards available for IP protection and a list of Minnesota's leading IP law firms.
Protect Those Designs!
Enjoying the fruits of your creativity requires legal safeguards of your intellectual property
Your company is really good at making a specific product — let’s say, industrial filter systems. One day, a customer calls who’s having trouble with your system. A friendly service tech needs more information; she tells the customer to peek under the hood. What does it look like under there? The customer obliges, describing every gizmo and widget he can see. The tech thinks, “That sounds like one of ours, but there’s something off about it. That one widget shouldn’t be there, and the shape is all wrong… “
Your clever tech is onto something. The system isn’t one of yours. It’s, ahem, inspired by one of yours, but it’s designed and manufactured by a lower-cost competitor. It’s a knockoff. Situations like this happen all the time.
Lock down your IP
In competitive, research-driven industries, companies can take measures to protect their original designs — and ensure that they’re not inadvertently copying an existing design. Here are some key words to know:
Trademarks protect brand expressions and taglines or slogans. Before bringing an innovation to market, get advice about trademark protection. Trademarking an innovation’s name puts competitors (and potential copycats) on notice.
Copyrights protect “fixed expressions,” says J.R. Maddox, corporate and intellectual property (IP) attorney at Minneapolis-based Henson & Efron. That includes websites, manuals, tutorials, catalogues. Copyrights cover only the specific expression: your own words. They don’t cover ideas themselves.
A patent protects new inventions. Inventors show their work in a patent filing to get limited-term protection against unauthorized use.
Trade secrets are like patents, but secret. Unlike patents, trade secrets don’t expire, but they’re also easier to dispute, because they’re not publicly filed with patent authorities. Also, the onus is on IP owners to keep trade secrets secret. That usually involves multi-layered physical security, employee and vendor confidentiality agreements, and compartmentalization of information within the organization.
Designers generally rely on trade secrets for highly sensitive, proprietary processes, and on patents for designs and inventions that actually make it to market, or could, in the future.
Due diligence & cost-effectiveness
Innovators must follow this golden rule: Do your due diligence, and do it early.
Jennie Clarke, a business law attorney at Henson & Efron, says one client invested thousands in an ambitious branding initiative for its new product line, only to discover that someone else was practicing the same trademark. The wasted effort (and risk of an infringement suit) could have been prevented with better due diligence.
“By far the cheapest call to your lawyer is the one you make before you do something,” says Clarke. She says most attorneys prefer a proactive, preventive approach to IP security: Why litigate if you don’t have to?
“We try to be cost-effective for our clients,” says Clarke. “We don’t want them to avoid calling with questions because they think the meter is running.”
Even when a new product or design is likely (or clearly) in conflict with an existing, in-practice patent, litigation isn’t inevitable. A cease-and-desist letter is often enough to resolve the issue; worst case, the parties negotiate a settlement without involving the courts.
Agents and attorneys
Another way to reduce IP protection costs is to use a patent agent when possible, not a patent attorney. Patent agents are technically proficient individuals, usually engineers or scientists, who’ve passed the U.S. Patent and Trade Office’s Patent Bar. They don’t need law degrees.
“Patent agents can do virtually anything a patent attorney can do, short of going to court,” says Jon Moon, PhD., president of Edina-based MEI Research and a patent agent himself. Moon’s status mostly accrues to his own benefit; he can write patents for his company without retaining an attorney.
“My patent attorney gives me the first crack at everything,” says Moon. “He just reviews my work and puts everything in the right order.”
More mileage from your patents
If your company has international ambitions, it needs an international patent. Patent laws vary by country. Seek patent counsel with expertise in specific jurisdiction of operations and look into filing an application under the Patent Cooperation Treaty (PCT), a global IP framework overseen by the World Intellectual Property Organization that covers 151 signatory countries.
PCT applications put your patent on record in those countries, providing some legal protection for your IP. In practice, such protection can be expensive, uneven or downright dubious. And it won’t prevent bad actors from stealing your IP, particularly in countries with sketchy track records (e.g., China).
Clarke recently helped a local recreational products company find the Chinese contract manufacturer responsible for producing custom play spaces in the U.S. She prevailed upon the company to sign a letter affirming that her client’s design was proprietary and that the company wouldn’t manufacture it for anyone else. That commitment, arguably more important than a formal patent, “leveraged my client’s relationship with the manufacturer and the implicit threat of lost business,” says Clarke.
Protecting patentable designs
Kai Worrell, CEO of Minneapolis-based healthcare design firm Worrell, has IP protection down to a science. Worrell is heavily involved in R&D for Medtronic; the medtech giant’s in-house IP counsel is a constant presence during design presentations.
“We envision different ways to embody conceptual products and solutions,” says Worrell. “Medtronic’s legal team has a field day collecting those visions, and we trust them to make robust [IP] filings on the back end.”
Utility and design
Worrell also works with outside IP attorneys, including Ben Tramm of Merchant & Gould and Todd Fronek of Larkin Hoffman. They help Worrell and Worrell’s clients develop an IP protection moat around its designs. That includes year-long provisional patents that provide immediate protection; utility patents that protect functional components and processes; and design patents that cover ornamental design features, like the external appearance of a smartphone — recently the subject of a billion-dollar legal tussle between Apple and Samsung.
“Utility patents and design patents aren’t necessarily mutually exclusive,” says Fronek. They often go hand-in-hand. If you develop a new drug-coated stent, you’d want to prepare a utility patent for the functional features of the drug-delivery system and a design patent for the stent’s unique appearance.
Patents have two key sections: specification (including description and drawings) and claims. The claims section should be as broad, inclusive and non-absolutist as possible, covering the entire universe of potential applications. The description section should be much more granular, listing in exhaustive detail the invention’s unique features, so different methods of implementing the invention are covered by the claims.
When in doubt, add more protection. “You want to look at all the different features and elements of your design and protect as many as possible,” says Fronek.
DESCRIPTION: Provides innovative industrial design solutions for clients in a variety of industries, including medtech.
LEADERSHIP: Dr. Jon Moon, Founder/President
DESCRIPTION: Develops software, sensor and precision measurement solutions for researchers and healthcare companies
Protecting Against IP Theft Online
For insight into the types of digital threats business owners and designers face, what exactly can be done to strengthen digital IP protections and how to mitigate the damage from successful breaches, we turned to Shane Vinup, co-founder of Maple Grove-based Cyber Advisors; and Mike Canavan, a cybersecurity expert at Kaspersky Lab (a Cyber Advisors partner).
The threat landscape
“Designers and business leaders face a variety of possible threats to intellectual property during the design process,” says Vinup:
Insider threats: Without proper physical and digital security, including compartmentalization within the company, rogue employees can make off with sensitive data, to sell to a competitor or to extract revenge as they walk out the door.
Lost hardware: Lost laptops, tablets, phones and physical storage media may contain sensitive, unencrypted data that threatens the organization.
Targeted malware: Known as APT infections, target malware programs can sit within an organization’s computers and extract critical data unbeknownst to the target. (Speaking of Target: the Minneapolis retailer’s infamous 2013 breach was an APT attack.) APT infections usually target high-value information, such as aerospace/defense specs, credit card numbers, and Social Security numbers.
Off-the-shelf malware: Designed to compromise systems or extract sensitive data, off-the-shelf malware can be delivered via phishing email, “maladvertising,” spam email, “drive-by downloads,” and rogue social media users.
Ransomware: Delivered via similar methods, ransomware encrypts data within the target’s system until they deliver a monetary ransom.
Poor passwords: Specialized tools can crack poor passwords and access sensitive or personal data.
An Ounce of Digital Protection
Beyond ditching “password123” as your go-to password, what can you (and your IP attorneys) do to protect your trademarked and/or patented designs against these threats? Vinup and Canavan advise:
- Keep software and firewalls up to date, especially on systems housing sensitive data
- Conduct annual or quarterly “access” reviews to determine who has access to your data
- Store extremely sensitive data on systems without Internet access
- Run simulated phishing attacks monthly to “keep employees aware and on their toes”
- Prioritize protection for C-level executes and other key employees, including design leads
- Make thorough, up-to-date backups and keep them physically separated (e.g., on a different network) from the originals, as ransomware often deletes backups
Need help? Firms like Cyber Advisors assess clients’ overall level of risk and identify their most important assets.
“We first take time to understand what data and systems are most important to the client,” says Vinup. “From there, we analyze how that data is accessed and whether proper protection, including security and backup, are in place.”
Then it’s time to implement a comprehensive protection strategy. That typically includes:
- Installing gateway security, such as “firewalls, intrusion prevention and detection, log monitoring and analysis, and multi-factor authentication”
- Installing endpoint protection, such as “anti-virus and anti-malware protection, patching, data loss prevention and encryption solutions”
- Education and training for end-users, including simulated phishing attacks
- Mobile device security
- Rights management, meaning “auditing and control solutions for large amounts of data down to a single document”
- Backup and disaster recovery planning
HEADQUARTERS: Maple Grove
LEADERSHIP: Shane Vinup, Igor Bogachev
DESCRIPTION: An IT service provider that specializes in network solutions, including engineering, data security and uptime maximization
List of Leading IP Law Firms
Shumaker & Sieffert: St. Paul-based Shumaker & Sieffert focuses solely on patent law. Its team boasts advanced degrees in electrical engineering, mechanical engineering, chemical engineering, computer science, physics, and computing engineering — a virtually unrivaled depth and breadth of technical expertise.
Maslon LLP: Minneapolis-based Maslon LLP covers a wide range of IP disciplines, from healthcare and biotech to entertainment and media. The firm has a substantial cybersecurity practice as well.
Patterson Thuente: Another IP-only firm that caters to SMBs and independent inventors alike. According to its website, 92% of its attorneys have engineering or science degrees. Based in Minneapolis, with a satellite office in Brookings, South Dakota.
Schwegman Lundberg Woessner: SLW’s attorneys handle everything from pharmaceutical chemistry to the radio-frequency electronics that underpin the Internet of Things. Ranked first for patent quality by IAM two years running.
Merchant & Gould: Merchant & Gould has focused exclusively on the IP realm since the beginning of the 20th century. Fortunately, it has hired new attorneys in the interim.
Kinney & Lange: Minneapolis-based Kinney & Lange is yet another IP-exclusive firm with an international bent. Web: kinney.com Vidas, Arrett & Steinkraus: This Eden Prairie-based firm takes a hands-on approach to patent law, starting during the ideation process.
Hamre, Schumann, Mueller & Larson, P.C.: Like Kinney & Lange, Hamre takes an international approach to intellectual property law. Innovators seeking protection abroad, take note. Web: hsml.com Fogg & Powers LLC: Edina-based Fogg & Powers LLC bills itself as a “patent prosecution” firm capable of pursuing patent protection actions at home and overseas.
Dicke, Billig & Czaja, PLLC: Minneapolis-based Dicke, Billig & Czaja, PLLC, has a team of “technically proficient attorneys” with a broad range of competencies.
Fish & Richardson: Fish & Richardson is a national IP law firm with offices in Minneapolis. It’s been named top patent litigation law firm for 13 years running by Corporate Counsel magazine.