Important IP Considerations for Dentists and Dental Practices

Jun 6, 2017

Should I invest time and resources in selecting a name that can be protected with federal trademark registrations prior to starting my dental practice?

Absolutely, coordinating your branding with federally registered trademarks provides tremendous value to a dental practice. Small business owners frequently write off obtaining a federal trademark registration as an unnecessary expense. Many believe that a trademark is a luxury, one only large, litigious companies can put to proper use. This is certainly an easy mindset to fall into, especially for dentists who have worked hard to limit themselves to “must buy” expenses, but to do so is to mischaracterize what a trademark really is. This failure to obtain trademark registration for critical branding, such as the company and/or reward programs, keeps dental practices from obtaining maximum benefits from their marketing and infrastructure investments.

A trademark is not only an offensive tool, an additional means to bring law suits against competitors, but also a defensive tool that can protect you from law suits and ensure that you have the greatest advantage possible if you end up in the court room. Equally critical is that federally registered trademarks can result in lowering your legal expenses in the event you end up in court. Simply put, for an ongoing business it is not uncommon that the cost of properly trademarking its brands eventually pays for itself.

It’s no secret that branding is a very important aspect of building a dental practice. The establishment of a strong brand creates a business identity for clients and potential clients alike to make use of and refer your services. But it is important to remember that branding comes with a significant risk. The greater your brand has been built up, the greater the incentive for competitors to attempt to piggy-back on the consumer good-will you have earned. Federal trademark registration helps protect against the piggy-backers. With the proliferation of Internet company reviews, having a federal trademark registration can really protect your business from copiers (regardless of whether they are accidental copiers) even if they are in another state.

If you later wish to expand or franchise your dental practice, then having branding that is protected by federal trademark registrations will make the process much easier. In practice, trademarks registrants often do not even need to take infringers to court to stop them from infringing. Instead, because these legal benefits carry a significant advantage, should the infringement suit go to trial, trademarks registrants are often able to stop infringers through nothing more than a cease-and-desist letter.

Trademark protections also extend to domain names, adding further protection to the branding of trademark registrants. For holders of federal trademark registrations, domain names will be enforced as if they are an infringing use of the trademark, and so a cease-and-desist letter will often be enough to stop an infringing domain name registration. If the infringer refuses, a trademark registrant would be able to bring a trademark infringement suit or could even bring a less costly arbitration suit (a Uniform Domain Name Dispute Resolution Policy dispute) with ICANN, the company responsible for assigning internet protocol numbers and managing all domain names. A federal trademark gives companies several options on protecting potential domain names for their brands that would otherwise be very difficult to enforce.

If I already have an established dental practice should I consider co-branding?

Yes, if your current dental practice is using a name that is very similar to many other dental practices then it can make a lot of sense to co-brand. This is a good way to, over time, develop branding that can be protected using federal trademark registrations.  Once potential protection is in place for the new brand it can be used together with your existing brand, possibly with less prominence. Then, over time, the prominence of the new brand can be increased until customers recognize the new brand as well as the original name. This is a good way to transition from a dental practice that has a fairly ubiquitous name to one that is more readily identifiable in the market place.

Can I use images that I find on the internet on my website?

Only if the rights to the image are expressly licensed to you for commercial use. The unauthorized use of pictures found on the internet can subject your practice to significant damages. If the owner of the image has obtained a copyright registration for the image then the owner can be awarded “statutory damages,” a financial award set by law, without showing that any detriment occurred from the unlicensed use.

Should I consider filing for copyright protection for my website?

When employing a website designer it is important to memorialize in writing that any copyrights in the resulting website are owned by you. Fortunately, even if you did not obtain a contract transferring all copyrights, you may still be the owner if the website is considered a work for hire. In the case of a work made for hire, the dentist or practice for whom the work was prepared is considered the author, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.

If you have invested significant time, money and effort in developing your website, then it makes sense to file a copyright registration. If a competitor decides to copy your layout, template, and other creative portions of your website, having a federal copyright registration may allow you to recover damages or force the competitor to change designs.

What should I do if I have an idea for a new dental product?

Regardless of whether you have developed a new and exciting improvement to an existing dental device, developed a new manufacturing process, or developed new manufacturing machinery, it is important to at least consider obtaining patent protection.

The US has a first-to-file patent system. This may significantly impact dentists and dental companies and their patent strategies. In the past, an inventor could be entitled to obtain patent rights even if a third party filed a patent application first,  provided that the inventor could establish an earlier date of invention and the diligent reduction to practice of the invention afterwards, which culminates in the filing of a patent application by the inventor. That is no longer the case. Now, if the third party files a patent application for an invention before you do, then the third-party is entitled to obtain patent rights even if you developed the invention before they filed their application.

For this reason, it is important to file a patent application as soon as possible. For individuals or research groups that develop multiple potential inventions on a regular basis, it can be advisable to regularly file provisional patent applications to provide a window of opportunity to determine which inventions will be pursued while increasing the likelihood that potential patent rights are preserved.

Prior to disclosing your new developments to the public or to third parties, it is advisable to have a patentability search and written patentability opinion prepared to determine whether your idea is likely to be patentable. The securing of patent protection can provide you with exclusive rights to practice your invention for a limited period of time. This provides a competitive advantage over other dentists and/or makes it more costly for them to compete with you. After considering the results of the patentability search and written opinion, the next step is to determine whether the potential amount of patent protection for your invention justifies preparing US patent applications.

Patents can generally be divided between utility patents and design patents. Utility patents are used to protect how something works, its structure, the core concept, etc. Design patents are used to protect how something looks. Depending on the nature of the dental invention, one or both types of patent applications may be appropriate.

The patent application process begins when an application is filed. Examiners at the USPTO then read the applications and search the USPTO database for similar patents in the United States (and may occasionally search limited foreign patent databases). The examiner then prepares an initial report as to the patentability of the invention. This report is referred to as an office action.  The office action will include arguments and identify supporting documents which may raise issues in connection with patentability. There are many different strategies that can be employed when replying to an office action. Once the examiner has been satisfied that there are no issues remaining which bar patentability a notice of allowance will issue. Once the issue fees are paid a patent will issue in approximately 2 to 3 months.

It should be understood that, regardless of whether you are selling dental equipment or compounds, infringement of third party patents is a possibility. If this is a concern, then it makes sense to have an infringement search and written clearance opinion prepared. Based on the results of the written clearance opinion, some minor modifications to an invention may be made to minimize any potential patent infringement issues. This can help avoid recalling products after costly investments in tooling, advertising, and inventory.

If you have any questions regarding branding, trademarks, patent planning or other intellectual property matters, please contact Garcia-Zamor Intellectual Property Law, LLC. Ruy Garcia-Zamor has been helping individuals and businesses with their intellectual property needs for over nineteen years.