By Richard A. Catalina Jr., Esq.
Whether they know it or not, all businesses create Intellectual Property (“IP”). It is in their services and in their products. It is in their names and in their brands. It is vested in the relationships with their clients, customers, distributors, and sales agents and staff. It is embodied in their marketing strategies, markets, and advertising.
As part of any business’ strategic planning, the protection, enforcement, and exploitation (maximum value enhancement) of its IP must be duly considered. The following Ten Essential IP Strategies comprise a basic starting point.
1. Non-Disclosure Agreements (NDAs). Whether a business employs one individual or one hundred, chances are that personnel will have certain access to various levels and amounts of confidential information concerning the nature and operations of the business. To ensure that business information stays with the business and is not disclosed to third parties, all personnel should be required to execute proper Non-Disclosure Agreements.
2. Assignment of Intellectual Property. As with an NDA, personnel also should be required to execute a proper Assignment. Don’t kid yourself –– your business doesn’t need to be a Fortune 500 R&D company to need this level of protection. A proper Assignment helps ensure that whatever is created by personnel within the scope of employment is owned by the business.
3. Protection of Trade Secrets. A trade secret is a critical, proprietary, and commercially advantageous piece of business information that must be kept secret in order for the business to maintain its commercial advantage over its competitors. To qualify for trade secret protection, the owner of the information must maintain reasonable precautions to keep the information secret, such as: 1) marking information as confidential; 2) utilizing nondisclosure agreements; 3) restricting distribution of the material; and 4) immediately recovering unauthorized distribution.
4. Register all Copyright Materials. Copyright is a form of protection provided by the laws of the U.S. to the creators of “original works of authorship.” This protection is available to both published and unpublished works and no registration or other action is required to secure the copyright. However, because there are definite advantages to registration, copyright material of any value should be registered with the U.S. Copyright Office.
5. Register Trademarks. A trademark is a word, phrase, symbol, or design, or a combination of words, phrases, symbols, or designs, that identifies and distinguishes the source of the goods and/or services of one party from those of others. Trademarks should be registered with the U.S. Patent and Trademark Office. Although you do not need to register a trademark to establish rights based on legitimate use of the trademark, owning a federal Registration on the Principal Register confers numerous logistic, strategic, and legal advantages.
6. Work for Hire Contracts. Generally, a work for hire issue arises when a third party is contracted to perform a service for a business, and in the performance of that service, the contractor creates a work that is copyright material. As a matter of Copyright Law, the creator is the owner of the work at the moment that the work is fixed in a tangible medium. However, ownership in the work may vest in the party paying for it (i.e., the business) if there is a separate “work for hire” contract between and signed by the parties.
7. Obtain Utility Patents. Patents are a government issued form of protection for new, useful and non-obvious inventions. The right conferred by the patent grant is “the right to exclude others from making, using, offering for sale, or selling” the invention in the U.S. or “importing” the invention into the U.S. If you believe that you may have a patentable invention, contact an expert immediately, as there are extreme (and unforgiving) time limitations that apply.
8. Obtain Design Patents. In the U.S., designs are also patentable –– at substantially less expense –– and this protective device is relatively unknown by many. When a utility patent cannot be obtained on an invention, a design patent should be considered.
9. Web Site Documentation. Proper web site legal documentation is not only necessary for liability purposes, it also serves as an IP protection device and enhances the overall value of the business behind the site. Don’t do what so many other web site owners do: lift the legal documentation from another web site. In most cases, such documentation is inadequate; at worst, the documentation is totally inapplicable and leaves the web site owner unprotected.
10. License, License and License. Properly execute the above nine Essential Strategies and your IP may realize such an increase in value that others will want to pay you to use it. The greater the value of the Intellectual Property, the greater the licensing opportunities. Licensing presents immense leverage and can grow your business beyond your wildest imagination.
These Ten Essential Strategies are not exhaustive, but they do comprise a basic first level of protection. Implementing these strategies will not only provide “must have” protection of your IP, but it will surely enhance asset value –– and provide peace of mind.
Richard A. Catalina, Jr. is a veteran Intellectual Property, Internet and Technology attorney and Registered U.S. Patent attorney. With more than twenty-one years of experience, Catalina has been named a New Jersey Super Lawyer for Intellectual Property for seven consecutive years. Catalina is Of Counsel in the law firm of Szaferman Lakind and a member of the firm’s Intellectual Property, Internet and Technology practice group. For more information, e-mail firstname.lastname@example.org, visit www.szaferman.com or call 609-275-0400.