Client Alert: Top Five Take-Aways Regarding Protecting Your Intellectual Property
On August 8, 2018, Ben Fuller
presented Intellectual Property Protection, Licensing and Acquisition to a group of attendees at 1776, an incubator for start-ups in Philadelphia.
Below are the top five take-aways from the presentation.
- Determine what intellectual property the company really needs. As when making any business decision, a company should carefully evaluate their options and what they really need. A company should review its business strategy, goals and technology development. Does their industry require patents for investment? Is a patent necessary to protect the company’s technology? Does the name of a product warrant a trademark? Should the company’s software be protected by a copyright? Is a trade secret a better alternative? A company should carefully consider the current state of its business and its budget to determine what patents, trademarks and copyrights they should be registering and what trade secrets they should be protecting.
- Don’t wait to investigate. While some companies may find out they don’t need intellectual property protection, it is important to investigate the company’s needs from the beginning. The United States Patent and Trademark Office can bar an investor from filing a patent if they wait too long to file. Moreover, the United States is on a “first inventor to file” system, meaning the first inventor that files for patent protection gets priority. It’s better to spend the time and money up front than to lose the opportunity. For trademarks, evidence of use can grant you minimal protection; however, defense of a company’s or product’s name requires an early trademark filing.
- Maintain trade secret protection. Trade secrets can protect items like formulae, processes and designs. As they are “secret” they are often to the exclusion of other intellectual property. With 2016’s Defend Trade Secret Act, trade secrets are more universal, however companies need to follow the rules. To keep the option of trade secrets open, a company is required to keep the information secret. Clients are often surprised at what needs to be done to maintain trade secrets. It means setting up policies that only share the company’s “secret sauce” with those who need to know, including restricting employees, investors and outside consultants. Once these protections are breached, a company may not be able to gain trade secret protection.
- Determine if the company is protecting itself through contracts. Whether a company has intellectual property protection or not, a company’s first line of defense is a confidentiality agreement. All employees, consultants, contractors and business partners should sign a confidentiality agreement appropriate for the information being shared. A robust confidentiality agreement can keep a company from an expensive patent infringement or trade secret dispute.
- Consult an attorney. It’s always better and cheaper to consult an attorney before intellectual property rights are damaged or lost.
A bit of thoughtful planning on the front end can save you the stresses of waiting too long. Reach out to Ben Fuller if you are interested in learning more about protecting your intellectual property.