Puerto Rico Intellectual Property Overview

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There is often a tradeoff between the widespread dissemination of solutions to intractable social problems and the legal protection of intellectual property. On the one hand, if a social sector organization uses the intellectual property laws to protect a process, technology, invention or creative work essential to its social mission, others will be inhibited from replicating the same or similar methods of accomplishing positive social change. On the other hand, the protection of intellectual property can sometimes help social sector organizations achieve scale and thus accomplish greater social good by, among other things, generating revenues, minimizing confusion and maintaining quality control.

Every social sector organization should carefully assess and consider the importance of its intellectual property to the success of its mission in order to select the appropriate level and method of legal protection for these assets. To aid in this assessment, the following provides an overview of federal and Puerto Rico laws protecting copyrights, trademarks, trade names, trade secrets, and patents.

 Trademark  Trade Name
 Patent  Trade Secret
 What it commonly protects Literary and artistic works Words, phrases, symbols, logos, and images Name and goodwill of organization if different than officially registered name New and useful inventions and processes Information that is not generally known
 When might this protection be useful for a social sector organization?  1. Ability to license literary and artistic works with others while retaining ownership
2. Potential source of revenue

1. Prevent others from using your name and causing confusion
2. Increase awareness by consistently using same names and slogans
3. Help create a brand

1. Preserve reputation and goodwill
2. Protect investment of time and effort in creating a name or brand

1. Potential source of revenue
2. Ability to license inventions and technology with others while retaining ownership
3. Quality Control

1. Protect donor lists and strategic plans for fundraising
2. Protect formulas and business information or know-how

 Basic Requirements  1. Work must be original
2. Work must be shown in a tangible medium of expression

 1. Must be distinctive
2. Must not infringe any existing trademark rights

 For any nonprofit or for-profit corporation, LLC or limited partnership, it can be any name that is not already in use and differs from the name officially registered with the state.  1. Novelty – invention cannot be"anticipated" or be identical to a previous invention
2. Non-Obviousness - invention must be different enough from previous inventions so it does not directly follow from previous inventions
3. Utility - invention must have a useful purpose.

 1. Owner of the information must take reasonable measures to maintain secrecy
2. Cannot be reverse engineered
3. The information must have some value to the organization

 Is federal protection available?  Yes  Yes  No  Yes  No
 Is state protection available?  Yes, to the extent not preempted by federal law. Often, but not in every state.  Yes  No  Yes
Necessary to file with the government to receive protection? Not necessarily, but it is advisable. A work is  protected as soon as it is created, but one must register before suing for infringement Not necessarily, but it is advisable. Federal registration is presumptive evidence of ownership and confers federal question jurisdiction in federal courts
No.  Some but not all states have fictitious name registration, but such registrations are not required for trade name protection.  Yes  No
Symbols to indicate claim of right Once a work is created or published, owner can use © to indicate copyright claim. Not necessary to file before using this symbol. If trademark is unregistered or in the process of registration: ™
If trademark is federally registered:®

There is no symbol, but many states require a disclaimer such as: “E+Co is a tradename of Ecologic, Inc.” After filing you can use: “patent pending” to warn others that you claim the right.
“Patented” or “pat.” along with the patent number should be marked on the product

There is no symbol to indicate ownership of a trade secret.

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