By Eric J. Snustad & David C. West
Start with a solid foundation. Just like building a house, when it comes to intellectual property (IP), this is a good start. After over 45 combined years of IP experience, we have seen all types of companies, with all levels of experience, make the occasional mistake on IP. No matter how much IP experience a person has, it can be valuable to have short, easy-to-consume reminders of the basic things a company should consider. Here is our version of the IP top 10 list.*
1. For all employees who may create inventions, technology or other IP while working for you, have them sign an agreement assigning all such IP to your company.
When an invention, technology or other works are created by an employee who has not signed a good IP assignment agreement, it can create major headaches. Well-drafted employment agreements often include IP assignment obligations. Such obligations, however, can also be established in other types of agreements. Regardless of the exact agreement type, it should be signed when the employee starts working for you. Also, it should include a present assignment of future inventions (as opposed to merely saying the employee “agrees to assign” future inventions). In the absence of such an agreement, your company may not have the IP rights it needs.
2. As soon as you develop an important technology, promptly look into whether it may be patentable.
In the patent world, bad things sometimes come to those who wait. For example, if a competitor beats you to filing a patent application on the same invention you have been working on, you may end up in a tough spot. As another example, once you start selling an invention publicly or otherwise disclose your invention publicly, at best, you have one year in which to validly file your U.S. patent application. Also, if foreign patent protection is important, you likely must file your patent application before your first public sale or other public disclosure of the invention (there is no “grace period” for filing patent applications in certain foreign countries).
3. Before deciding whether to file a patent application, have a patent search done.
By starting with a patent search, you can make a more educated assessment of whether your invention appears to be patentable. Good patent searches are done in basically the same way as patent examiners do their searching when examining a patent application. Before you invest the significant money required to prepare and file a patent application, invest the relatively small amount of money required to do a good patent search.
4. If your invention looks patentable, whenever possible, file your patent application before you disclose it outside your company.
5. If you must disclose your invention outside your company before you have filed a patent application, get a confidentiality agreement signed.
In some cases, important business reasons may compel you to disclose your invention to someone outside your company (e.g., a supplier, development partner or customer) before you have filed a patent application. In those cases, make sure to get a solid confidentiality agreement signed before disclosing your invention/technology to them.
6. In situations where you have been disclosing confidential information repeatedly over time to another company (e.g., a regular supplier, development partner or customer) under an existing confidentiality agreement, before each round of information disclosure (e.g., before you start sharing information with them under a new project), check to make sure your existing confidentiality agreement is still in force.
Also double-check whether your existing confidentiality agreement is written so as to cover the new type of confidential information you are looking to share (e.g., does the existing agreement apply only to certain types of information, such as the subject matter of a specific, past project?).
7. Be wary of signing confidentiality agreements from certain companies.
Too often, companies are asked to sign confidentiality agreements and then reflexively do so without considering the downsides (perhaps thinking they are harmless, “routine” agreements). Think carefully about whether you wish to sign a confidentiality agreement (and thereby sign up for being exposed to, and restricted by, the other company’s confidential information). In case your team is already thinking about or working on similar ideas, you may have significant risk of being “poisoned” by the other company’s confidential information. If you do wish to have an initial meeting, consider insisting that it be strictly non-confidential (so both sides agree, ahead of time, that no confidential information will be exchanged). In some cases, the initial meeting will give you everything you need to know. In other cases, you may wish to take things to the next level and thus sign a confidentiality agreement.
8. When picking a name for a new product, choose a trademark that is distinctive.
Trademarks have different strengths. The stronger a mark is, the greater your ability will be to stop others from using something similar. Marks that describe a feature, ingredient or quality of your product may convey information about it to consumers, but they generally are not initially protectable as trademarks. On the other hand, adopting a mark that consists of distinctive words can lead to a trademark registration and strong rights.
9. Before adopting a new a product name, have a trademark search done to check the availability of the name.
Companies can spend a lot of time and money introducing a new product. You do not want all of that to go to waste because it turns out someone else was already using a similar name for a similar product. Thus, it is a good idea to run a search to see if the name you are considering using is already being used by someone else. Checking the Trademark Office database records and running some internet searches are good places to start.
10. Consider filing a trademark application to register your mark.
You can acquire rights in a trademark just by using the mark in commerce (e.g., by simply selling products bearing the mark). Obtaining a federal trademark registration on your mark, however, will greatly increase your rights and put others on notice of your use of the mark.
11. (Bonus) Make sure your domain name is registered in your company’s name.
Many companies use a web services firm to design their websites. The services offered by these firms may include registering the domain name, and sometimes, the web services firm registers the domain name in its own name. If the registration is not transferred to your company, this can cause problems down the road if you want to transfer the domain name but are no longer working with the web services firm.
*This is far from an exhaustive list. It is merely intended to be a quick refresher on some of the important IP things we believe people should keep in mind.