In January's free monthly Business Development series teleclass held last week, I had the privilege of interviewing savvy patent attorney David Gornish of Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd. (they are specialists in Intellectual Property, Computer and Information Technology Law).

It occurred to me that what David had to share with the audience was so valuable and informative that I ought to summarize the 10 key points and bring them to your attention.

1. The four types of intellectual property in the USA are

a. patents - these are grants by the US government giving the owner the right to stop others from making, using or selling your invention
b. copyrights - these protect original works of authorship (websites, music, design, articles etc)
c. trademarks - these protect commercial identifiers such as logos, graphics, that distinguish goods and services
d. trade secrets - these protect any commercially valuable information that is not known to anyone other than the owner, such as chemical formulae, recipes, customer lists etc. 

2. The two major considerations in creating and claiming ownership of intellectual property are:
a. to create value, by recognizing the intellectual property assets
b. to avoid liability by infringing on the intellectual property rights of others.

3. Patents are only granted (after a lengthy and usually somewhat expensive application process) for inventions that are (i) useful (ii) novel and (iii) non-obvious. You have to prove these in your claims, in the application process.

4. If you work for an employer such as a large medical group or an academic medical center, you may not be the owner of your invention's patent. Check your employment agreement for the terms of patent/invention ownership -- it may be that the organization owns the patent! If you have a useful novel and non-obvious invention that would benefit the organization you work for, perhaps they will pay for the patent application. And look to see if they have policies in place to reward inventors with royalties.  This has the potential to create a win-win result for both of you.

5. It is smart, and in the long run less costly, to engage the services of an attorney who specializes in intellectual property and patents. He or she will begin with a detailed "infringement search" to ensure that you are not creating liability for yourself. This applies to patents, registered trademarks (those trademarks that you have formally registered and for which you can legitimately use the R in a circle ® - registered trademark symbol) and, to a lesser extent, copyrights.

6. Keep records in a notebook or a "paper trail" of any email communications you might have about your invention. In the USA, the patent is usually awarded to the first person to document their invention (not the first person to file for a patent, as in many other countries).

7. When you develop your website, make sure you have a written agreement with your web developer and graphic designer that states that you own the copyrights for your design and website. Otherwise it is assumed that the web developer/graphic designer owns the copyright to the code and design used to create your website.

8. Don't copy anything without permission. Be original.

9. Simply adding the C in a circle (©) plus a year appears to be sufficient to lay claim to your content as copyrighted. For example - "Copyrighted © 2005-2008"

10. You can search the USPTO databases for other patents and trademarks to avoid infringement liability - this is a tedious but necessary step. And you can get useful information and the necessary forms for filing to protect your intellectual property at the USPTO site, as well as at the US Copyright Office.