Protecting Your Intellectual Property

As our economy matures beyond the Internet boom, companies may perceive that intellectual property protection is less important. Contrary to this perception, the simple fact is that all companies have intellectual property issues, and the success of many companies depends on proper protection and exploitation of intellectual property assets. A simple audit of your company’s intellectual property and the methods by which you develop and protect that intellectual property can save you from potentially disastrous consequences. You should also police your rights to prevent competitors from improperly using your company’s intellectual property, which is particularly important in the trademark area.

In the patent area, if your company has developed proprietary technology, you should discuss the developments with an intellectual property attorney immediately. A patent attorney can assist you with obtaining exclusive rights and in determining whether a particular technology is available for your use and exploitation. An early search to determine the patentability of the technology and its availability for use can save research and development money, reduce legal fees, and even minimize damages if your company is found to have infringed another company’s patented technology. In general, this should be done before any commercialization or publication of the technology.

You should also be proactive in the area of trademark protection. Companies can often make the mistake of picking a name without determining whether the name is available for use. In particular, a trademark attorney can help you determine whether your proposed mark infringes on a third party’s mark. You can also use the United States Patent and Trademark Office’s site at www.uspto.gov to make your own preliminary assessments on name availability. Trademark counselors can assist in evaluating the search results, suggest other, broader searches that can be run and determine whether it is appropriate to file an application to register the mark.

Your company’s proprietary materials may also be subject to copyright protection. In general, federal copyright law protects any creative expression that is fixed in a tangible medium. This could take the form of marketing materials, software or even employee handbooks. With respect to this kind of information, a copyright registration may be desirable. To take advantage of statutory damages provisions, you should consider registering your company’s commercially significant copyrights with the Copyright Office before anyone infringes the copyrights. Although not required, including a copyright notice showing ownership is highly recommended.

You should also protect your firm’s trade secrets, which may be a formula or a method of doing business that is not general knowledge in the area. You need to ensure that confidential information relating to the trade secret is released only to those who need to know that information and is maintained in a way such that the general public cannot gain access to the information. Otherwise, the trade secret can be lost.
Finally, you can contractually protect your company when you hire contractors or other third parties to develop proprietary materials on your firm’s behalf. You should ensure that you have obtained appropriate rights to use the materials and, in most cases, will want to own the copyright or patent rights to the materials developed for your company by the third party. In particular, when it comes to copyrights, failure to have such an assignment clause in an agreement may mean that the developer retains the copyright to the materials, even if you have paid the third party for their development. On a related note, you should have agreements with your employees to ensure that the employees will assign and protect intellectual property and keep proprietary information confidential.

In summary, there are many things that you can do yourself to ensure that you are appropriately protecting your company’s intellectual property. Nevertheless, a short discussion with an intellectual property attorney who asks the right questions can be a significantly beneficial way for you to protect your assets.

Wade Kerrigan is a partner in the intellectual property department of Blackwell Sanders Peper Martin LLP. He may be reached by phone at 816.983.8248 or by e-mail at wkerrigan@blackwellsanders.com.