By Richard Hall
Over the course of humanity, every discovery has yielded more questions as we continue to explore new territory. As we continue to explore the frontier known as cyberspace, and discover new ways to use the medium, we are opened up to more ethical dilemmas and questions. Intellectual property has always been a thorny issue. The internet however raises new problems for businesses and individuals seeking to protect their intellectual property. With the easy access to information, protecting your IP is a virtual minefield.
What is Intellectual Property? Intellectual property (IP) is subject matter that is a product of the intellect or mind. The term however, actually refers to the legal entitlements that are attached to intangible ideas, concepts, and certain types of information in their expressed form. In example, a book or movie is the expression of creative and artistic work and Intellectual Property would provide the copyright holder exclusive rights for a period of time to control the reproduction and adaptation of that work. Copyrights, patents, trademarks and industrial designs are all examples of intangible subject matter. An often overlooked intangible is trade secrets. Trade secrets can be protected under Intellectual Property.
Intellectual Property is a valuable business asset which can be leveraged in the marketplace to as a competitive advantage. An IP audit can help you to determine what hidden assets you may have in your business. Many firms will send you an IP audit checklist which has a series of questions designed to uncover valuable business assets. Once you have uncovered your IP, you should take steps to protect it.
Ensure that you own the rights. In today’s world, many businesses outsource functions which are not their core competency. Paying to have something created does not grant you ownership. You may have paid an outside contractor to develop a sophisticated software program, or a graphic designer to revamp your logo or even a writer to develop your marketing collateral. When hiring outside firms to create something for you, you should always use a Work for Hire Agreement. Standard agreements are widely available. A Work for Hire Agreement basically transfers all rights from the creator to the payer.
Don’t forget your employees. Many organizations have their employees sign employment contracts which stipulate that any work created for the company belongs to the company. It is similar to a work for hire agreement with independent contractors in that the rights belong to the organization and not the individual. You are paying the employees to create the work on your behalf.
Protect your inventions. If you have invented a business method, process or other patentable invention you need to take steps to protect it. It is advisable to refrain from selling a patentable invention until you have taken the necessary steps to protect your rights. Filing a patent application is expensive and is something that should be done by an attorney specializing in patent law. If you are a new business, there are interim steps that you can take that will offer you protection until you have the cash to file the patent application. File an Invention Disclosure Document. This document can be purchased for about $10.00 and when filed with the United States Patents & Trademarks Office will protect some of your rights for approximately two years. You can also document your invention in an invention diary or something similar and mail it to yourself via the United States Postal Service. It is important to use the US mail system rather than an outside carrier such as FedEx, or DHL. The post office is a federal agency and will be accepted by the Patents and Trademarks Office. Once you receive the package, do not open it – store it in a safe place until you are ready to take the next steps.
Notify others of your rights. If you have created written works or other information which falls within copyright laws, use the copyright symbol, which is the C within a circle. This can be followed by the year the work was created and your organization’s name. An R within a circle indicates a registered trademark and should not be used unless you have in fact registered the item (i.e. logos, brand name). However, you can use TM (trademark) or SM (service mark) next to your name or logo. This will deter others from stealing your work. Additionally, if your internal or external contractors are creating software for you, have them embed footprints in the code to protect you in the event that someone steals your software. The footprints are identifiable information that can be used to prove that you created the software.
While you want to share your IP with the public to drive business, it is equally important to take the necessary steps to protect this valuable asset.
Richard A. Hall is founder and President/CEO of LexTech, Inc., a legal information consulting company. Mr. Hall has a unique breadth of experience which has enabled him to meld technology and sophisticated statistical analysis to produce a technology driven analytical model of the practice of law. As a busy civil trial attorney, he was responsible for the design and implementation of a LAN based litigation database and fully automated document production system for a mid-sized civil defense firm. He developed a task based billing model built on extensive statistical analysis of hundreds of litigated civil matters. In 1994, Mr. Hall invented linguistic modeling software which automatically reads, applies budget codes, budget codes and analyzes legal bill content. He also served as California Director and lecturer for a nationwide bar review. Mr. Hall continues to practice law and perform pro bono services for several Northern California judicial districts.