Transcript

Wei Wei: IP is just like any kind of property that can be transferred and their ownership can be assigned to another entity. So you definitely should identify, put a value on it and then figure out who should own it.

Voiceover: You’re listening to the Texas Family Law Insiders podcast, your source for the latest news and trends in family law in the state of Texas. Now, here’s your host attorney Holly Draper.

Holly: Today we’re excited to welcome Wei Wei Jeang to the Texas Family Law Insiders podcast. Wei Wei is a Member of Grable Martin Fulton PLLC, a WBENC-certified law firm that has an innovative virtual general counsel and outsourced legal department business model. She assists her clients to obtain patent and trademark protection and enforce their IP rights. Having worked for a Fortune 500 company as an engineer, as well as a patent agent, coupled with her 30 plus years of big law firm experience, Wei Wei is uniquely situated to understand intellectual property challenges facing her clients. Thank you so much for joining us today.

Wei Wei: Well, thank you for having me on your podcast. This isn’t only the second one I’ve ever been on, and I look forward to providing some insight about IP to your audience.

Holly: So why don’t you start by just telling us a little bit about yourself?

Wei Wei: So I have been, your intro pretty succinctly summed up my career. I have been in the Dallas area for 30 plus years. But I have clients spread out nationwide and some even abroad overseas. I have a background in computer engineering. And like you said, I worked first as an engineer, and then made a transition into the patent field. And later on, started working a lot also in the trademark area.

Holly: So you left out a very important piece of your background or your personal life, in that you have a bit of a menagerie. And I love following you on Facebook and seeing your, what do you have, emus?

Wei Wei: Emus, peacocks, ducks and chickens, of course. And what are we missing? A turkey. And of course, the usual dogs and cats.

Holly: Well, that’s awesome. I feel like I’m underachieving with my two dogs. So how would you describe your current practice?

Wei Wei: It is, like I said, mainly heavily in patents and trademarks. And a little bit in copyright. Doesn’t come up as much. And we have a virtual practice. And because our firm began the virtual practice before the pandemic happened, when it didn’t hit everyone else in the world, we have been doing everything remotely, you know, since the beginning. So it really was, we just carried on as usual, and didn’t make any difference in how we practice law. And having been a big law lawyer for 20 something plus years, I just treasure being able to work remotely from home. It frees up a lot more of my time. And I can provide, I think become a more effective lawyer to my clients.

Holly: We’re very similar in my firm, where we were virtual before virtual was cool. And I agree 100%, about being able to be more effective and productive in a shorter amount of time than when you’re going into the office. So for those listening, who might be considering it, highly 10 out of 10 recommend it. But that’s not what we’re here to talk about today. I wanted to bring you on because I think a lot of family lawyers know little to nothing about intellectual property law. But when we are dealing with divorces, sometimes it comes up. So I thought it would be a really good idea to give some pointers and the basics so that family lawyers can sort of recognize when there might be an intellectual property issue in their case, and either have enough information to deal with it or at least know enough to know they need to contact a professional that deals in these types of things for more help. So why do you think this is an important topic for family lawyers?

Wei Wei: Absolutely. So I am not well versed in family law, but I did go through a divorce myself. But one issue that comes up in your practice is the division of property. And so the first step of that, of course, is to identify what properties are there to be divided. Intellectual property is a type of property, but it’s generally intangible. So most of the time, it’s out of sight out of mind. But, you know, hopefully your audience can achieve an understanding that it is, can be a very important and valuable asset that needs to be accounted for and divided when there’s a dissolution of marriage.

Holly: So I know there are three main types of intellectual property. And I wanted to go through each one of those and kind of let you talk about what they are, who they apply to, what they mean, and give us some good tips on those. So let’s start with patents. What can you tell us about those?

Wei Wei: So a patent embodies the rights granted by the US government to an inventor, who has conceived of an invention, which can be a useful thing, like a device, a tool, equipment, machine, or a system. An invention can also be a useful process or a method, such as a method of manufacturing, a material or method of processing, analyzing and using data. So the patent itself must describe the invention so that it teaches the invention. The goal for the patent system is that by providing the public, the teachings of the invention in the patent, it is an exchange for the 20 year monopoly that’s granted to the inventor, so that progress and advancements can be made in the state of the art. So patents are granted by each country, and go through an examination process to secure the patent rights, patent grants. And unlike trademarks and copyright, inventions are protected and dedicated to the public if the inventor doesn’t take steps to secure a patent.

Holly: So are patents generally held by individuals or by businesses, or can it be either one?

Wei Wei: it can be either. So by default, the inventor owns the rights to a patent if it hasn’t been assigned to a company. A lot of times, an inventor who is an employee of a company will, by contract, be required to assign his or her rights to the company, who is the employer, in this case. But it can be held in either way. So if, especially if you’re dealing with someone who is in the high tech industry, you definitely want to make an inquiry as to whether this person who is involved in your case has been identified as an inventor on a patent grant. And patents are public records, so you can search for them. Patent applications are confidential within the first 18 months of filing. So there is a period of time where you cannot find it publicly. So it is best to ask a patent attorney to provide some assistance if you need to find and uncover patents that are in the inventor’s name.

Holly: So even though something may not be publicly available for us to go just run a search for it, a patent attorney would be able to tell if a patent has been filed by a particular individual?

Wei Wei: Well, no, not necessarily. But the patent attorney can ask the right questions of the person who’s involved and perhaps find that information. So during that 18 months, only the owner or the assignee of the patent application can access, or their attorney can access the information.

Holly: Okay, so next on our list of the three most common types of IP would be trademarks. So tell us a little bit about those.

Wei Wei: Okay, so, trademarks are encountered by us every day right in advertising and promotions from companies. A trademark is the way that a business identifies itself to its customers. Trademark rights can exist as a common law right or as a federally granted right. That’s when the owner registers the trademark with the USPTO. US Patent and Trademark Office. A trademark can be associated with goods or services, or both, that are offered by the trademark owner. And a trademark can be a lot of different things. It can be one or more words, it can be a logo, it can be a tagline, it can even be a color. Think of the Tiffany blue. A sound like the Intel Inside notes. It can even be a scent. I secured a scent mark for a client, which is relatively rare for a shoe. So her sandals, the rubber soles are infused with a tropical coconut scent. So we were able to secure a scent mark for her. So any thing, any device that a business uses to identify itself to its public, its customers, and clients can be a trademark. Trademarks are also granted by each country and goes through an examination process.

Holly: So you mentioned common law versus applying with the federal government. So if someone has a business, and they have something unique, you know, a logo or whatever the case may be, and they have not taken any steps to register that or get it protected, what sort of protections does it have? Can it be infringed upon under common law?

Wei Wei: Right. So common law rights means that no trademark registration was obtained, or has been obtained, or even applied for. And so what I think of it is, the way to think of it is, then the common law trademark right exists only where commerce is conducted or transacted by that business. So if your business is Texas based and your customers are Texas based, then most likely your common law, trademark rights are, you know, limited to Texas, or the specific city centers that you have transacted business. Now with internet though, that has made, that has changed a lot of things for us. Because if you offer your goods and services via the internet, even when you are based in Texas, and in actuality your customers are from Texas, like for example, I’m thinking about restaurant business. Because you have a website that advertises and promotes your restaurant services on the internet. And commerce, you know, by definition can regulate internet because it is involved in interstate commerce, you are eligible to secure federal registration. But if you don’t have that, what that means is your customer base could be limited to just whoever walks in the door that actually benefits from your services. So there’s a lot of gray area that we have to look into. When you don’t have a registration, it’s a little bit more difficult to determine the metes and bounds what the where those rights exist. And another on the flip side is if I have a trademark registration for a trademark, and later I find out that in some podunk town in some, you know state far removed from me has been using my identical trademark, or similar trademark, for similar or identical services or goods, then what that means is and they precede me in terms of their usage before I filed or before I started using my trademark. What that means is my nationwide coverage of my trademark registration then is like Swiss cheese, right? Because there’s a hole there. So it’s best to conduct a very comprehensive search when you’re not going down this trademark route and make sure you know what you’re dealing with in terms of whether you have nationwide cover or not, and also get, first, get to the trademark office as soon as you can if you’d like a trademark because we can kind of reserve a trademark before you start using it. So that’s that.

Holly: So then the third of the three areas we’re going to talk about is copyright. Tell us a little bit about that.

Wei Wei: So copyright is a bundle of rights, that’s realized as soon as the creator or author puts down the creation or work of authorship on something that’s tangible, such as writing it down on paper, or typing it into the computer and it becomes an electronic record. Or sculpts a sculpture or paints a painting, or write the notes down for music composition. So all of those are, again, common law, copyrights, that is realized as soon as the creation becomes tangible, becomes recorded in some form. Now the bundle of rights for a copyright includes the right to copy, to reproduce, to transmit electronically, to display to perform. In other words, anything, anytime you are doing something with a copy of the work of authorship, it is a right that’s protected by copyright. So with the advent of technology, new rights are probably being created as we speak. And it’s always exciting. Right now, one hot topic in copyright, of course, is the rights of copyright owners when their creation or their work of authorship is being fed into artificial intelligence engines to train artificial intelligence technology. So, you know, people were of course, rightfully up in arms about that. So you can have common law copyright, but then you can also obtain copyright registration with the US Copyright Office. And so this gives you additional advantages. For example, you can bring infringement lawsuits in federal court and make available to you statutory damages. And so in order to bring lawsuits based on your copyright, you have to register the copyright. So that’s always recommended. And it’s a relatively inexpensive process, compared to patents and trademarks.

Holly: The example that pops in my mind is like photographers. So they, you know, they photograph something, and they own the copyright of that under a common law. So if they haven’t taken action to register that particular photo with a copyright, they have no recourse against anyone who takes it and uses it. Is that correct?

Wei Wei: They do, because they have common law copyrights. So you can send a cease and desist and say, hey, that’s my photograph. I can prove that I had it on my website. And as of this date, you obviously, the photographs are identical. But in order to bring a lawsuit, you have to have it registered. So a lot of times before you send a cease and desist letter, you may want to go ahead and get the registration going. I think there are ways to speed up the registration process so that you can show the infringer that you have a copyright registration for the photograph in question.

Holly: So you can obtain that registration after the fact when someone has already infringed on your copyright.

Wei Wei: Yes, but ideally, you will want to, kind of the rule of thumb is when you publish your work, you want to apply for registration within I think it’s the three months of the publication date. So in today’s environment, we take 1000s of photographs, you know, every day probably, maybe that’s an exaggeration, probably 10s of hundreds. And so you can’t really do that. You can’t register all of your photographs, but definitely if for example, I know your son frequently enters his photographs in contests and he wins awards for his photographs. For those, you probably should go ahead and get registration done. I think the filing fee is only $45, involves an application form. So you know once you get going doing it a few times, it’s really a very easy process.

Voiceover: This episode of the Texas Family Law Insiders podcast is sponsored by the Draper Law Firm, providing family law litigation in Collin, Denton and Dallas counties and appeals across Texas. The Draper Firm has represented parents in cases before multiple courts of appeals and prevailed in the Texas Supreme Court in one of the biggest parental rights cases in Texas history. For more information, visit draperfirm.com or call 469-715-6801.

Holly: So when we’re talking about it from a family law perspective, and looking for, you know, what may or may not be valuable, with these three different areas, can all three of them be of significant value? Or should we be looking more for patents or copyrights? Or how would you characterize value when we’re talking about these different things?

Wei Wei: It is always not easy to put a value on intellectual property. Of course, if you’re already deriving income from the IP, then it’s easier, right? Because you can base the valuation on something that’s actually happening. There are firms that specialize in providing valuation on IP. So if it’s a valuable piece of intellectual property definitely should engage, you should engage a firm that specializes in that. And any patent ,trademark or copyright, any of those IP can be extremely valuable. We can all think of very important and valuable patents, trademarks and copyrights, right. Examples for them. So it’s definitely something that should not be overlooked. And at least identify them so that you can choose to put a lower value if you don’t think there’s much value involved, but at least identify those pieces of IP. So they could be part of the asset being divided.

Holly: So if we’re looking at potentially dividing or allocating some of these IP as part of a property division, it’s really important for us to understand who the owner is, and if, you know, one of the spouses actually is an owner or a business owned by spouses is an owner. So talk a little bit about ownership of these different types of IP.

Wei Wei: es, so a lot of it also has to do with whether the IP became realized or come into being I guess, during marriage, right. If it happened before marriage, then of course, it’s separate property, in terms of Texas. But if it came into being become a piece of tangible, intangible property that comes into being during marriage, then it is definitely something that you need to look into further. So did you want me to talk about inventor, some of the terminology, or employee or versus?

Holly: Yeah, I think that’d be helpful. I know, you had kind of given me a list under this category, and one of them, we’ll start with inventor versus author. What can you tell us about that?

Wei Wei: Right, so we call someone an inventor when they have a patent, right? Or patent application. So the inventor is the one that has conceived of the invention. And so, a lot of times you see that happening. Employees of tech companies, a lot of times they are required to when they start employment, they’re required to sign an employment agreement that basically says, any invention that you conceive of during employment, during the terms of employment, is ours. Is the company’s. Some companies are more lenient. They may say inventions conceived of during work hours on company premises, using company equipment, belongs to the company. So you will need to look into the fine print in their employment agreement to figure out whether the company has dibs on the invention or the patents that result from it or not, or the employee does. And also, we use the term author to describe and when the IP in question is copyright. And the author, by default is the owner unless they are obligated again to assign it to another entity. So a lot of times when you hire, for example, a software programmer to work on a piece of software, to code, generate a piece of software for your company. If there’s no written agreement, that spells out ownership, then that independent contractor who’s your software programmer that you paid for their services will own the copyright of the piece of software they generate. You may own a copy of it because they wrote the software for you and your payment for their services will give you that piece of software, but you do not own the copyright. So it’s very important always to have a written agreement that spells that out clearly, especially when it says independent contractor. Employees, when there isn’t an employment agreement that spells out IP ownership, by default, the employer still owns it. So by default an independent contractor would be the one to own that piece of IP.

Holly: How about spouses of either an employer or a contractor? How do they play in?

Wei Wei: Yeah, so again, so when we say spouse, we assume that the IP was generated or created during the marriage. So if the employee had agreed to assign the rights to the employer to the company, then the spouse would not have any rights to that either. But if the person in question was hired as an independent contractor, and the determination is that the independent contractor, because there isn’t a written agreement, the independent contractor owns the IP, for example, copyrights to software, then the spouse because of you know, community property will own half of it, you know. So that is definitely something that needs to be looked into, for sure.

Holly: So, what tips do you have for family lawyers, as far as possible signals or possible things to look for when we’re looking at property when we’re talking to our clients about divorce, that might signal to us, there’s an intellectual property issue here that we need to dive into deeper?

Wei Wei: It’s almost like playing a sleuth. Investigating. Given the data that you have available to you, I think what you need to do is, of course, speak to the spouse that you represent, and try to determine the nature of the other spouse’s employment. What kind of work do they do? Who’s the employer? If they are typically working as an independent contractor, then you would want to inquire into what kind of work if it’s the type of work that lends itself to the creation of copyrightable work. Then that’s a path you would want to go down and look further into whether or not indeed they would own copyright to things that they have created. So it’s almost like playing detective and ask a lot of questions. And hopefully, with today’s topic, you will at least trigger something in your mind when you come across a situation where you think that IP might be involved.

Holly: A couple of things come to mind for me of when an attorney should really start to think about this. That would be if one of the spouses own businesses. What is the nature of these businesses? Are they likely to have invented anything? Do they create art of some sort that would be copyrighted? Another example, you know, if you represent, say, you represent a music artist or something, or you represent or somebody is, maybe works for a music artist. They write songs for them, or they’re creating things to look into, okay, does that writer of the songs have any ownership interest in the songs that the artist is putting out?

Wei Wei: Right. And of course, as a business owner, you always have trademarks, right. You have the name of the company or the brand. A lot of times you have logos. And a lot of times each product has its own trademark. So look at you know, and also, company owners may brand their services differently. Each type of service may have a different name associated with it. So it could be pretty significant. Now, one way to play detective, of course, is with businesses, you can go on their website and take a look at what they are actually promoting, right. And when you see a TM, or a circle R right next to a term or a logo or tagline, you know, they are holding that out as a trademark. R means that it’s a registered trademark. TM means it’s not registered or not yet registered, and have something pending. So that’s a good way good place to start, at least for trademarks. And take a look at what kind of services do they offer? What kind of products do they offer? Are these things that could be subject matter of a patent or copyright? So at least there’s some places where you can go and find out more about the nature of their business, and see if IP is an applicable issue to look into.

Holly: So you touched a little bit on this earlier about, there’s companies that value intellectual property and how difficult to compete to value. Is that something you know, somebody who’s a business valuation expert is going to be able to value IP? Or is this something that is more of a niche that we need to be looking for a specific IP valuer? Or even more specific than that, somebody who, you know, let’s talk about the musical artist. Somebody who’s gonna value that specific type of intellectual property.

Wei Wei: Yeah, this is definitely not something I have a lot of knowledge of. So when things like this come up, we refer them to companies that actually do this as a specialty. And so I think many of them use accounting methods like fair market value. And then, of course, like we mentioned before, if there’s already an existing income stream, you can look at that very easily. Patents are good for 20 years. So you look at the life of a patent, how much income it could generate. Copyright can exist for quite a long time. I believe it’s 75 years after the death of the author. And there are kind of complicated rules about the life of copyrights. Trademarks can exist for as long as it’s being used. So you know, all of those can enter into valuation. And it’s best to get a company that specializes in that to provide put a dollar value on it.

Holly: So if we’ve established we have these, you know, however many types of intellectual property in our case, and we’re ready to talk about dividing property. Can intellectual property be divided? Can it be transferred? Or does it need to just be valued and put on whosoever side it happens to belong to?

Wei Wei: IP is just like any kind of property that can be transferred and their ownership can be assigned to another entity. So you definitely should identify, put a value on it, and then figure out who should own it. The caveat is trademarks is somewhat special in that because its value is tied so intimately with goodwill and reputation of the company that uses it for his goods and services, it’s not easily transferable. Because if you transfer trademark you, sometimes basically you’re transferring like part of your business, and the goods and services along with it. So it’s a little bit trickier to kind of figure that out. But it definitely can still be something that the ownership of it can be transferred and assigned.

Holly: And is that something that a person looking to transfer is going to need an intellectual property attorney to help with? Or is the divorce decree going to be sufficient to effectuate a transfer?

Wei Wei: I think it’s probably best to just consult with an IP lawyer. There may be things that are tricky that you don’t want to make, you want to make sure that it’s accounted for. Trademark being the situation I just mentioned. And also, in addition to transfer of ownership, IP can also be licensed. So if you cannot transfer a piece of IP or cannot divide it easily, perhaps one spouse can be a licensee or receive some kind of royalty from the generation of income from that piece of IP. So there are different ways that you can probably structure other than just outright transfer and division.

Holly: So it’s probably a really good idea for the family lawyers out there if they don’t already have a relationship with someone who does IP law to try to make that type of a connection. So that if one of these issues pops up in your case, you have someone you could call and say, hey, I got this issue. What do you think? And you know, maybe the client needs to be connected? Maybe not. But having those relationships will really help figure out if that’s something that’s necessary.

Wei Wei: Absolutely. And IP lawyers are not all nerds. We can be fun too.

Holly: Do you feel discriminated against as an IP lawyer?

Wei Wei: Oh yes. Absolutely.

Holly: So we’re just about out of time. But one of the things I like to ask everybody who comes on the podcast is if you could give one piece of advice to young lawyers, what would it be?

Wei Wei: One piece of advice to young lawyers. Not just family lawyers, or anyone?

Holly: It can be either one. Normally I do ask about family lawyers, but since you’re not a family lawyer, I thought I might broaden that scope a little bit.

Wei Wei: I think one piece of advice is that networking at any stage of your career is important. Not just because you’re in private practice. Even for inhouse lawyers, it’s important to connect with lawyers who are in your company, in your firm, as well as outside. And as well as within the same kind of practice area and outside because lawyers don’t exist isolated from everyone else. You’d be surprised at how much collaboration actually happens between lawyers. Because the end result that we all want is that the client is served, no matter what needs they have. And clients have a variety, a myriad of needs. Especially for businesses, they may encounter issues that come up in real estate and employment and IP, and just happens, you know, all the time. So that connections will enable you to be able to refer a client to people that you know will service them well. And I’m always typing up and putting Holly’s name out there because I really respect what she does for her clients and the services that she provides. And, I have no problem, you know, putting her at the top of the list when family law issues come up. So that’s my recommendation to young lawyers. Make those connections. Go to Bar events and shake those hands because you know, you never know if you can be a resource to others as well as when those people can rely on you as a resource. So that’s my recommendation.

Holly: Well, I think that’s excellent advice. So where can our listeners go if they want to learn more about you?

Wei Wei: I have a LinkedIn page and also I have a web bio on my firm’s website grablemartinfulton.com. And I’m on Facebook a lot too, aren’t I. I think you and I were Facebook friends first, I believe.

Holly: Yes, I have found that to be a very valuable networking tool. Plus, I get to enjoy, you know, people that have emus and things like that on Facebook.

Wei Wei: You don’t come across those people that often.

Holly: Alright, well, thank you so much for joining us today. And for our listeners, if you enjoyed this podcast, take a second and leave us a review and subscribe so you can enjoy future episodes.

Voiceover: The Texas Family Law Insiders podcast is sponsored by the Draper Law firm. We help people navigate divorce and child custody cases and handle family law appellate matters. For more information, visit our website at www.Draperfirm.com