Welcome back to our series “IP 101: Your Questions Answered”. In the last edition, we covered questions about business registration and LLCs. Today we’ll focus on patents and ownership rights.
I thought you would have to file a patent in other countries to protect your patent. If it was filed in the US, then it isn’t protected in other countries?
If you file in the United States for patent protection, then you are only able to stop others from selling a similar product within the U.S. If you’re thinking or planning to sell your product outside of the U.S., you would need to file for protection by either country or region. This is a particularly sensitive area, as you can potentially spoil your chances to patent in or outside the U.S. if you first sell or publicly disclose your product, so it’s best to seek out legal advice.
How do you handle the patent or trademark if your business idea is an addition to an existing product?
It should be handled very carefully. Before you start work, you may need to seek the permission from the original creator or license the original product or otherwise discuss the appropriate use of the trademark before you can do anything. With something as delicate as this, you’d be well served to seek professional advice.
I created a piece of IP for my use at my former employer. It is of value to that employer if someone knew how to use it. I created it on company time. Is this technically my IP?
This is a common situation and can be very tricky when you are dealing with a former employee. It depends on what your employment agreement or employee handbook said about inventions or IP. Many companies will state that anything created using their equipment and/or on company time and/or for their business is owned by the company, not the employee. Others only care about IP that relates to their business. As it can vary widely, the fIrst step is to read your employment contract.
Any advice about freelance sites (upwork, elance, fiverr) and protecting what you pay for (i.e., making sure it’s mine)?
When using a website or in-person services for work for hire, you should first read the contract to see whether or not IP ownership rights transfer to you upon completion, whether you have the right to make changes to the work, or any other stipulations. If it isn’t covered in the contract, don’t be afraid to negotiate with the contractor to get it.