Valuable Intellectual Property Tips for Business People

As a COO, my expertise is in operations. On occasion, I am introduced to an area of expertise that is actually important to what I do, but I don’t know as much about it as I ought to. At a recent COO Forum meeting in Chicago, a speaker covered the subject of Intellectual Property; I am pleased to introduce that speaker as a guest Blogger: Adrienne B Naumann, a well-known Intellectual Property attorney in Chicago. There is a link to Adrienne’s Blog at the bottom of this article.

Intellectual property (IP) includes rights which attach to business assets and relate to ownership and use. To begin, most businesses should budget for preventive maintenance of IP. A relatively small investment annually in legal advice to protect IP can prevent future theft or inadvertent loss. To arrive at this budget, businesses must document an inventory containing exclusively IP related assets. This inventory must contain IP within the business infrastructure as well as products and services.

In addition to maintenance, businesses should protect confidential information which provides a competitive advantage. If confidential information is initially upgraded to what is known as trade secret status, then there is additional protection. Confidential information exists in product and production processes, as well as vendor and customer lists.

Businesses should also beware of investment in business method patents which are not patent-eligible. The law may change in the very near future, but it is probable that the following business methods will remain unpatentable subject matter:
a. processes done solely by mental steps; and
b. processes done solely with pencil and paper.
In a similar vein, businesses should not invest in non-patent eligible processes which are (i) primarily abstract mathematical equations; or (ii) formulas which represent mathematical processes.

To the extent possible, businesses should invest in cost-effective IP protection such as (i) U.S. copyright registration, (ii) trade secret protection and (iii) non-disclosure agreements with contractors, vendors and employees. To prevent ownership of your projects by independent vendors, each vendor should sign an agreement which guarantees that your business owns the project for which it is paying. Each employee should sign an agreement with non-compete provisions, and transfer of ownership to employment related inventions to your business.

There are several reasons to prefer United States copyright registration, if appropriate and especially for computer related businesses. For example, it is significantly less expensive than patent protection and requires much less time to obtain. Moreover, you need not always reveal confidential information upon registration and your work is protected in many foreign countries.

If your business requires a patent be aware of which fees are necessary. Travel to Washington, D.C. to present an appeal or interview an examiner are optional and do not require your presence. Also be cautious when investing in international patent protection, if you cannot afford to enforce your rights overseas. Furthermore, financial considerations may require that you forgo foreign markets until there are resources to adequately patent and defend your rights in the United States.

Adrienne’s Blog can be found at http://adriennebnaumann.wordpress.com/

One thought on “Valuable Intellectual Property Tips for Business People

  1. A great article. However, can I also caution against two further things:

    1. No matter how many agreements you have, if they are breached and your confidential information leaks out into the public domain, then having a right of action will be small recompense. Therefore, agreements need to be backed up with appropriate practical measures designed to protect your information. This means physical protection as well as adequate access controls to digital data etc. It really is amazing how much sensitive information people leave lying around when visitors are present, for example!

    2. An NDA relating to discussions surrounding (say) a potential supply agreement, does not negate the need for a full agreement – including modified confidentiality clauses – once those negotiations bear fruit.

    Written down, both of the above seem common sense. However, I have worked with some major international companies where (in particular the latter) have been forgotton.

    When you are in the thick of negotiations and everyone is ‘friends’, eyes can become so focussed on the bottom line that other things can be allowed to slip, and within the IP arena, once the cat is out of the bag (is that an expression used in the US?) then it can’t be put back.

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