August 2003

Intellectual Property Management Tips
By Brad Thomas

The U.S. Patent and Trademark Office has seen 50% growth in trademark and patent applications over the last five years. In addition to legal protection against competitive copies, patents also represent differentiation and, consequently, marketing power.

Trademarks, service marks, and trade dress distinguish companies and products, provide brand recognition, and represent value to the customer. Copyrights protect literary works, including published documents, software, and website content, and often represent a significant portion of a company’s unique knowledge base. Trade secrets—the proprietary know-how of a business—are perhaps the most, valuable, and difficult to protect, of a company’s intangible assets.

While businesses recognize the income opportunities of their intellectual property (IP) assets, they also understand the risks of poor IP management. Neglecting a maintenance fee payment or inadvertently disclosing confidential information, for example, can jeopardize the rights to existing IP. Also, recent changes in the business environment, such as a more transient workforce, increased use of the Internet, and growing global competition, present new challenges. Consequently, more businesses are taking a proactive approach to managing their IP. A good IP attorney is required for legal matters, but a company can perform a number of tasks itself, and a variety of resources are available to help.

The first step is to conduct an IP audit to review and assess the company’s IP portfolio, policies, and procedures.

The objective is to protect trademarks and service marks, signify all marks with the appropriate SM, ™, or, if registered, ® symbols, and include a statement of ownership of the marks on the materials where they are used. Registering marks through the U.S. Patent and Trademark Office strengthens a company’s rights to use them. It is best to employ an attorney who specializes in trademark law when registering a mark. Before starting the registration process, however, a company may save time and money by doing a preliminary search to determine if any existing marks are confusingly similar, especially in the same product category.

Searching the Internet and industry trade publications and directories is a good place to start. Once a mark passes the preliminary search, professional services are available to perform thorough trademark searches. Companies may also consider registering domain names to protect the integrity of their brands.

Copyright protection is automatic for published works, but the protection is strengthened when a copyright is registered with the Copyright Office, which is relatively straightforward and inexpensive. Whether a copyright is registered or not, published documents should include “Copyright” or the © symbol and the years the materials were published.

A company can use patents to protect inventions that are “novel,” “useful,” and “non-obvious.” Because enforcing patents can be expensive, companies should assess the potential costs and value of the patent before starting the process. Companies can also do preliminary searches for inventions they are considering patenting, looking for “prior art” that would prevent a patent, and making sure someone else’s patent is not infringed. Consider alternatives to the patent process, such as protecting the invention as a trade secret or formally publishing it. Regardless of the method of protection, it is a good practice for potential inventors to maintain a bound journal with dated entries in their own handwriting, with new ideas verified with the signatures of two reliable witnesses.

Most businesses have some form of trade secret information, which may include drawings, formulas, client lists, or correspondences. Although there is no formal registration process for trade secrets, a reasonable effort to protect this information must be demonstrated to maintain trade secret status. Good practices include marking materials that contain confidential information as such; shredding or destroying discarded confidential materials; locking up outside trash (otherwise, it may be considered public domain, and legally available to “Dumpster divers” employed by competitors); and preventing free access to trade secret and confidential information by enforcing computer passwords, covering revealing labels, restricting visitor tours, and locking drawers.

In general, an effective IP program includes policies and procedures to cultivate, identify, protect, and capitalize on a company’s intellectual property assets. A company should keep good records of its relevant IP information, include a clear description of its IP policies in the employee handbook, incorporate protective actions and measures into standard procedures, and ensure company departments know what can be disclosed to whom and when. An effective IP review team could include representatives from the research, sales, marketing, operations, and accounting departments.

Brad Thomas is the co-founder and president of ip help, llc.

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