When a new technology is developed, obtaining a patent often becomes a priority. There are some situations, however, in which seeking patent protection is a less desirable option. One of those situations is when a technology is developed that cannot easily be reverse engineered—a technology that can be kept secret.
A classic example of this is the formula for Coca-Cola. Had the Coca-Cola Company sought patent protection, their patent would have expired in the early 20th century. However, because Coca-Cola knew that its formula could not be easily reverse engineered, the company opted to rely instead on trade secret protection. Now, well into the 21st century, Coca-Cola still has a secret formula and a brand that is very valuable.
A key to trade secret protection is in its name—keeping your technology secret. If a technology is in public view or can otherwise be easily reverse engineered, it’s very difficult to keep the technology secret. In such a situation, patent protection is preferable. The life of a patent is limited and extends 20 years from the filing date of a nonprovisional patent application assuming all maintenance fees are paid. In some cases, the term may be extended due to delay by the U.S. Patent Office during patent prosecution. In any event, the life of a patent has a definite ending point. Trade secrets on the other hand have no expiration. So if you have a new technology that can be kept secret with proper controls, you may want to seriously consider relying on trade secret protection instead of patent protection.
Many artists and creative product producers are aware that ownership of a copyright occurs automatically when an author of an original work places that work into a tangible medium of expression. Because this happens automatically, many feel that taking the extra step of registering their copyright with the U.S. Copyright Office is an unnecessary extra step. Regarding ownership, this is true. There is no need for an author of an original work to register the work in order to own the copyright in the work.
The issue changes, however, when an author desires to enforce his or her rights against a third party. In order to properly file a lawsuit to enforce a copyright, the filer must have at least first filed to register the work with the U.S. Copyright Office. Some federal jurisdictions even require that the work be registered before suit can properly be filed.
Perhaps the most important reason to register a copyright in a work is to be able to benefit from the statutory damages provisions of the U.S. Copyright Act. If a work is properly registered before infringing acts occur, the owner of a work can elect statutory damages instead of having to prove actual damages. This can save a tremendous amount of money in litigation. Statutory damages can range as high as $150,000 per registered work if the infringement is shown to be intentional.
It is tempting to think, “I’ll register my work if and when someone infringes it.” But this plan won’t afford you the benefit of statutory damages. In order to be able to benefit from the option of statutory damages, a work must be registered before infringing acts occur, or at least before knowledge of those acts occurs. So the idea of waiting won’t work. The drafters of the statute purposefully included this caveat to attempt to encourage authors to go ahead and register their original works of authorship. So, do you really need to register your copyright? If you want to benefit from the statutory damages provisions of the U.S. Copyright Statute, the answer is “yes”.