Publications: Intellectual Property: Beyond Good Ideas

To read the 2009-01 edition of Intellectual Property: Beyond Good Ideas, view the related file on the left.

The 5 Biggest Mistakes Companies Make Regarding Intellectual Property

1. Not Minding The (IP) Store:
   One of the biggest diffi culties companies have with respect to their Intellectual Property is recognizing it. A company needs to know what is patentable or copyrightable, what functions as a trademark, and what qualifi es as a trade secret. Value cannot be derived from the Intellectual Property if the company is unaware of its existence.
2. Failing To Lock Down The (IP) Hatches:
   Certain actions are necessary to secure and optimize the value of the company’s Intellectual Property. Patent applications must be prepared and fi led; important trademarks and copyrights should be registered; trade secrets must be kept confi dential; and employees and third-party developers should be under contract to assign IP. Failure to take the appropriate steps results in giving away company assets.
3. Showing Before Securing (IP):
   Unveiling a patentable invention – that is, showing or otherwise disclosing an invention to the public – before filing a patent application eliminates the inventor’s ability to obtain a patent in most countries outside of the United States. Moreover, in the United States such a disclosure or an offer to sell the invention starts a one-year clock running to get an application fi led or else face a loss of rights here as well.
4. Forgetting To Post The “Keep Off Property” Sign:
   Not placing patent numbers on products covered by the company’s patents can negate the recovery of damages for any infringement occurring prior to actual notice. In the trademark realm, failing to use the ® or ™ symbols (or doing so improperly) can unfavorably affect the strength of the company’s marks. Using the © notice alerts others that you are claiming your rights.
5. Stepping on (IP) Landmines:
   Bringing a new product to market using a mark similar or identical to one owned by another, or incorporating technology in a third party’s patent can blow up in the company’s face. Failing to search for existing IP can lead to lawsuits, damages and/or injunctions which could have been avoided. Every company needs to vigilantly take care of its Intellectual Property while avoiding IP owned by others. An IP audit can facilitate identifying what the company has, what it needs to steer clear of, and what it should actively be pursuing.

Corporate Corner:

5 Things to Ask About Your IP

1. Are your trademarks registered - are they marked with a ® or a TM?
2. Are your company materials/brochures/website registered – are they indicated with a © notice?
3. Are you protecting your trade secrets – have you limited access and labeled them secret? What about patent protection for your inventions?
4. Do you have confi dentiality restrictions and IP assignment requirements for your employees –did they sign a form?
5. Are there any non-compete or no-raiding restrictions that would be useful?

Protecting Your IP

Trademarks

A trademark identifi es the source of your goods/services. Benefits of a federal registration include exclusive right to use the mark on your goods/services nationwide; notice to the public of your ownership rights; legal presumption of your ownership; and jurisdiction in federal courts. You can use a US registration to get registrations in foreign countries and you can also file with US Customs to prevent importation of infringing goods.

Copyrights

Virtually any original work of authorship is eligible for copyright protection. Benefits of timely copyright registration include notice to the public of your ownership rights; registration within 3 months of publication entitles you to statutory damages and attorney’s fees in an infringement action (this is typically greater recovery than just actual damages and profits); registration within 5 years of publication is evidence of valid copyright; and you will need a registration to sue for infringement. Like trademarks, you can file with US Customs to prevent importation of infringing goods.

Patents

A patent protects your inventions and unique product designs. The invention or design must be new and non-obvious over what has been done before. A patent excludes others from making, using, or selling the invention. Applications for a patent must be timely filed. The US allows for filing an Application within one year from any public disclosure or offer to sell the invention. However, many foreign countries require an Application be on file before such disclosure.

Trade Secrets

A trade secret is something about your business that is not generally known that gives you a competitive advantage over your rivals. These may include a secret formula, recipe, process, or other invention that has not been patented. Protect your trade secrets by limiting access to them and labeling them “Secret” or “Confidential.”

Employees

Employees are vital to a company’s success. They should sign a covenant that requires them to keep your confidential information secret. They should also be required to assign inventions and other intellectual property that they create to the company. Consider including noncompetition and no-raiding provisions to your company policies to protect your company interests and your investment in employee training.