Intellectual property continues to be a constantly evolving field, especially
as the high courts continue to interpret copyright and patent laws and business
goes forward in a litigious society.
Michael A. Gamboli, a partner at Providence-based Partridge, Snow & Hahn, chairs the law firm’s employment and labor law and litigation practice groups. He said it’s never too early for a business to start thinking about protecting its intellectual property.
“For a fledgling business, when they’re thinking about their assets, a lot of time all they’ve got is their intellectual property,” Gamboli said, adding that besides employees, intellectual property is frequently the most important asset in a marketplace driven by technology.
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Intellectual property can include a wide realm of trademarks, patents, copyrights and trade secrets. Gamboli said the first thing the firm will do in taking on a new business, is conduct an IP audit to look at what intellectual property a company has and what intellectual property they have already taken the time to protect.
As part of the audit, the firm will also investigate what new products a company may be considering to introduce in the future and whether such a product may be considered infringing by a competitor down the road and develop invention logs and other necessary records.
Steven E. Snow, another partner at the firm and chair of the employment and labor practice group as well as a member of the firm’s intellectual property practice area, said companies often become involved in trademark squabbles because they don’t put a great deal of research into choosing a name or logo for their business. Then, when the business tries to expand its service area out of its immediate locality, it finds that someone else has the name trademarked and is forced to alter the very brand and image it worked to build.
“A new company is not going to have the resources to fight that fight,” said Gamboli, who said many companies are not aware that their name is valuable, and only realize they have to protect their image when somebody from another state, with a similar name, moves into the area.
Snow pointed to businesses that offer mortgage and banking services as being especially problematic. Those businesses provide a steady stream of cases for the firm, often having problems because most of their names include the words “mortgage” and “banking” – leaving a limited number of naming options.
Offering a couple case studies, Gamboli said one case the firm is handling involved a local company that is trying to trademark its “ESP valve,” named for the capabilities it has of reacting to hot and cold and turning itself on or off. Makers of a computer software product, which also carries the term ESP in its name, are fighting the trademark.
“Competing with different products in different markets, in our view there’s little or no likelihood of confusion,” Gamboli said.
But on a slightly different tack, the firm is also working with a large insurer in Rhode Island (not Blue Cross) that has seen another company, with a similar name and similar address (though based in Boston) move into the Rhode Island market. The direct competitors, doing business in the same industry and dealings with many of the same clients and systems, has caused massive paperwork confusion and generated many patient complaints. In the middle of litigation now, the Rhode Island company is basing part of its argument on the rights to its name on the millions it’s invested over the years in branding and ads.
Gamboli said much of the local work comes from intellectual property work as it relates to jewelry manufacturing. He said many companies don’t bother to document the design and processes that go into making a pin’s backing, or a small golden ornament.
He and Snow said patents deeply delve into the minutiae of a process or the way a product works. Basically, there are two ways to infringe a patent, either through a direct infringement – where every part of a product is the same – or through equivalence – where the end product ends up working in an extremely similar way.
A significant part of Gamboli’s caseload includes clients who are dealing with the intellectual property an employee, whether on purpose or inadvertently, has brought with them. He stressed the importance of employers not taking on workers who are bringing IP issues with them, including trade secrets, such as processes, molds or simply knowing a competitor’s price points, which would provide a huge competitive advantage in the jewelry world, where projects are often bid on.
“Companies need to make sure new employees aren’t coming in with that baggage,”
said Gamboli, who said many workers are required to sign confidentiality and
non-disclosure agreements. “It’ll end up being the owners who have to pay for
the legal costs and the headaches,” he said.
