ceeOur intellectual property (IP) consultants are experts in various legal fields, such as copyright law, trademark law and designs. Many are not deeply familiar with those fields. In this article we will explain the differences between them, the defenses that are given to each of them, the uncertainties in IP law, and most importantly – the best ways to protect your IP assets.
The law firm of Decker & Ofir is an Israeli boutique law firm that specializes in intellectual property. Our firm provides comprehensive legal services to our Israeli and international clients, including local and international registration of trademarks and designs, portfolio management and legal protection for IP assets.
What is Important to Know About Intellectual Property in 2021?
Intellectual property (IP) protects a huge variety of assets, from inventions and creative works, to business brands and to smartphone designs. Yet, it is considered a field that the general public has a narrow familiarity with. Not everyone knows the differences between patent protection and copyright protection, or of what exactly can be registered as a trademark.
It is interesting to see that in an opposite manner to the level of familiarity with the IP world among the vast majority of the public, the field is one of the most profitable legal fields that exist, and perhaps the most profitable one in Israel. IP assets, like Waze, Mobileye and USB flash drives were originated in Israeli and have been sold for billions of dollars. Thus, it is right to argue that getting to know more about IP is worthy.
In this article we will present to you some basic yet important information about IP. We will explain the differences between different IP assets (patents, creative works, trademarks, etc.) and the different legal protection which is granted to each of them. In addition, we will attempt to explain the difference between IP assets that require registration in order to be valid and assets that do not require registration. We will also elaborate on the difference between local protection and a global one.
1 – There are Different Types of IP Assets
The term intellectual property captures a large variety of assets. Everybody knows the patent protection, which is perhaps the most familiar form of intellectual property. In that case, the protection is given to inventions that meet different criteria of innovation and inventive progression.
Along with patents, everyone knows the field of copyright, which deals with protection of different works like songs, films, books, but also computer softwares and figures of electric circuits. Many are also familiar with the trademark protection, which protects brands, business logos, slogans, etc.
A less known field of intellectual property is designs, which protects industrial designs like clothes, cars and smartphones. And there are other less known IP fields like plant breeders’ rights, which protects new subspecies of plants. There is also the field of trade secrets, which involves protection of business data that gives its holder an advantage over its competitors. All the above, despite the great difference between them, are considered as parts of the realm of intellectual property.
2 – Registered Intellectual Property VS Non-registered Intellectual Property
Most of the protections granted for IP require registration. For instance, in order to obtain patent protection, one must go through the lengthy process of patent registration. Until a patent is being granted, the inventors won’t have any patent rights over their invention. Same applies for trademarks. If one’s competitors are using similar brands, it would not be possible to sue them for trademark infringement, unless this brand is registered as a trademark.
Yet, many types of IP assets do not require registration, in order to gain protection. A creative work, like a song or a book, would gain copyright protection in Israel and many other countries without registration. A trade secret, as long as it remains as such, would be legally protected as well.
A recent significant update in this regard is related to the field of designs in Israel. In the past, there was a requirement to register all industrial designs in Israel, in order for them to gain legal protection. In 2018 the new Designs Law came into force, allowing for the first time to grant protection to non-registered designs for a term of 3 years. It is still recommended to register industrial designs, since the period of protection given to them is longer.
3 – What is Intellectual Property’s Term of Protection?
Each IP field grants a different term of protection. In Israel, patent protection is for up to 20 years. A registered design can get up to 25 years of protection. Copyright protection is for the life of the creator of the work plus 70 years. Trademark protection is for 10 years, but it can be renewed without general limitations. Thus, the terms of protection are based on the type of the asset.
4 – If It Looks Like a Patent and Walks Like a Patent, It is (Probably) a Patent
In an important verdict of the Israeli Supreme Court, it was held that a product which can be registered as a design cannot enjoy copyright protection. Therefore, it is important to clarify what the type of IP rights a certain feature can gain, and to apply the relevant protection to it.
Sometimes it is easy to conclude what IP rights are relevant. For instance, it is obvious that a song would be entitled for copyright protection and a brand should be registered as a trademark. However, sometimes things are not as clear.
For example, although a computer software is a creative work, some features of it might be entitled for patent registration. In those cases, an in-depth examination by experts and intellectual property consultants is required to conclude what should be the proper IP protection. Our attorneys specialize in providing legal opinion regarding the right legal protection that should apply for IP assets.
5 – The Field With the Highest Level of Uncertainty
The field of IP is based on many broad legal definitions, and therefore not always provides answers to all the legal questions arising in a certain case. For instance, the definition of a creative work in the Israeli Copyright Act is broad as it is designed to prevent a situation where certain work would not be entitled to copyright protection. This lack of certainty requires the court to be involved in many cases, in order to conclude whether a certain work is indeed copyright protected. The same applies to many other IP-related legal questions.
6 – The Most Profitable Legal Field
Many think that real estate or commercial law are the legal fields that yield the highest profits. However, the most profitable transaction that ever took place in Israel was the acquisition of Mobileye by Intel, for almost 4 billion USD.
Mobileye was acquired mostly because of the patents and technologies that it has for autonomous vehicles. Many other examples of similar translations can be found worldwide. Thus, one cannot underestimate the value and the profits that IP assets can yield to its owner.
7 – Local Protection VS Global Protection
Generally speaking, IP assets are protected by the laws of a state or a region (European Union, for instance). Lawsuits in cases of infringements and illegal use of IP are held before state courts. In order to be able to sue, one must have a protected IP right in a particular state. Registering a patent in Israel alone would not grant a right to sue for patent infringement in the US. Similarly, a brand registered as a trademark in Israel would generally prevent the use of it elsewhere.
However, throughout the years there have been developments in this regard, and new ways to protect IP assets were created. For instance, the law began to recognize well-known trademarks. This definition enables to gain protection for marks that are widely known on the international level. It can apply even when they are not registered in a certain country. Yet, registration is still the best way to ensure protection for your IP assets that require registration.
8 – Intellectual Property VS Tangible Property
If I own a house, and I would like to protect it from burglars, I would usually take certain actions. Such actions could be building a fence, placing cameras inside and outside the house, or renting security services. Protecting IP assets is much more complex, since the products that are being protected are not tangible.
An owner of a popular clothing brand cannot build fences around her brand, in order to prevent it from being counterfeit. A creator of a song cannot rent a guard to “secure” his song from copying. The legal ways to protect IP assets are completely different from tangible assets. They require the assistance of experts, i.e., intellectual property consultants.
9 – Increase of IP Infringements
We live in a digital world, where IP can be infringed at the click of a button. Anyone who has a computer can legally distribute protected works, print clothing and products with counterfeiting brands and so on. Apparently, new technologies such as 3d printers would make infringement even easier to commit.
However, it is important to know that the law stands besides creators, inventors and businesses who own IP assets. Courts are ruling high compensation in cases of infringements. The compensations and penalties are intended to deter others from committing them. It is done precisely because of how easy it became to commit an infringement nowadays.
10 – Expertise in IP is Required
As we illustrated above, intellectual property is a very broad field, which includes various types of assets. It is a legal field with a high level of uncertainty, sometimes the highest level. Therefore, an expertise is required in order to properly protect your IP assets in the best way.
It is especially important because of the huge potential profit that selling an IP asset may gain. Moreover, it is not always easy to choose the right strategy and legal actions that should be taken (C&D letter, lawsuit, etc.). Thus, it is recommended to get the assistance of experts, and to be accompanied by intellectual property consultants in any issue regarding your assets, from registration to their sale and transfer.
For any question regarding intellectual property, including copyright, trademarks and designs, the law firm of Decker & Ofir is available for you. Our intellectual property consultants are experts in their fields. They have extensive experience in representing Israeli and international clients in various IP matters.