Intellectual Property Law

First, it is important for the company owners and employees to understand the concept and value of confidential information.  Almost every company has trade secrets.  For example, information regarding sources and costs for materials and supplies, manufacturing and operations methods, customer lists and prices, etc. is usually secret and valuable to the company.  These trade secrets should be identified, inventoried and protected from unauthorized disclosure.  A trade secret will be lost by making it public, so employees, vendors and visitors should sign non-disclosure agreements, and receive proprietary information on a need-to-know basis only.

Second, possibly new equipment, materials and methods should be considered for patent protection. There is a trade-off between protecting trade secret information and disclosing the invention in patents, which are public documents.  However, inventions which may be readily reverse-engineered or independently developed should be considered good candidates for patent protection.  Also, it is important to screen possibly patentable subject matter promptly, because patent rights can be waived in the U.S. if no patent application is filed within 1 (one) year of first public use or sale.  In many foreign countries, this waiver of the right to patent occurs immediately upon the first public use or sale, if no patent application has been filed.  Commercial use, even in secret, has been held to be “public use” for the purpose of this waiver of right.

Regarding trademarks and trade names, it is important to not approve a company name or a product or service name for your client which may be similar to someone else’s trademark.  Therefore, a trademark “search and clear” operation is recommended, in addition to the typical Secretary of State’s clearance, when adopting a business name. A trademark “search and clear” is also important for names of products and services, as others’ trademarks may apply to multiple products, services, and even across multiple trademark classes. Once the name is adopted, a federal trademark registration will discourage subsequent adoption of the same or similar name, even by remote or unrelated third parties.

Regarding copyrights, it is important for a company to own the rights to its logo, ad copy and in-house or customized computer programs.  As a result of case law, the “work for hire” doctrine is understood now to be interpreted restrictively, applying only to work of common law employees within the scope of their employment, and specifically commissioned, in-writing, works in specific listed categories.   Therefore, assignments of copyrights from outside visual artists, ad agencies and computer programmers should be obtained.

With these concepts in mind, you can easily help your new or small company client stock up with its own intellectual property rights.  Then, also with your help in being aware of and not infringing the intellectual property rights of others, your client can effectively focus on building the business, rather than having to resolve possibly unnecessary intellectual property disputes.