What is an Intellectual Property?

Intellectual Property ("IP") is an intangible asset of your business unlike land, which is a tangible asset. As you would want to protect any other property or asset, you should also protect your IP. Products, designs, names and other valuable assets developed by you or your business are IP assets. Protecting your Intellectual Property (IP) asset is as important as protecting any other asset and without proper protection may be lost or stolen.

In addition to the products and their uses, any symbols, logos, words or phrases that are characteristic of the product or your business or the services may also be IP. If your clients associate your products/business/service with such symbols, logos, words or phrases, they may be considered unique and they become valuable assets to the business. Think of a situation where another business opens next door and starts selling a similar product or providing a similar service using similar logos/words or phrases to advertise, will you lose customers or business? If yes, this may be an example of IP that you may need to protect.

Trade secrets are any information that you may have that gives your business a competitive advantage. As long as you can keep the information secret, it will be your trade secret. It does not matter that such information may be obtainable by others through their own independent efforts. Trade secrets include: technical "know how", customer lists, future product developments, inventory data and other such information that may give your company a competitive advantage. "Know how" is a term used to define unpublished technical or non-technical information that has economic value to your company.

Patent protection of your unique products may assist you in protecting your market. A patent is a grant from the U.S. government that allows you to stop others from making, selling, offering for sale, importing or using the product or process covered by that patent.

Trademark protection is used to distinguish your product or services from your competitors. The value of the entire company may be linked to a single trademark, thus a trademark can be extremely valuable.

Your words or phrases may also be covered by copyright. Copyright protection is for original works of authorship fixed in a tangible medium of expression. Copyright covers both published and unpublished works.

Protect your IP

To protect your IP, you should get counsel on how you should define and categorize it. Depending on this, you should be able to file for a patent, trademark, trade service, copyright or protect your trade secret or "Know-How". You may find that a product or a service is covered by patents, trademarks, copyright and trade secret protection simultaneously, since each type of intellectual property covers a separate aspect of the product or service.

In order to protect your IP, you should ensure that those who have access to your IP follow proper procedures. You will need to apprise your employees of your company’s IP practices and the employees’ responsibilities. It is critical that your employees have a clear understanding of who owns the inventions that they develop while employed by your company and what their obligations are when they leave your employment—not disclosing your IP to others.

Having an employee sign an agreement to transfer intellectual property rights provides insurance against employees taking valuable company property, such as, patentable inventions, company names or slogans, copyrights, and trade secrets. Additionally, such an agreement may actually heighten employee awareness to intellectual property issues and may deter employees from improper use or disclosure of that property.

Public Disclosure of IP and how it affects your IP rights:

Proper disclosure and recording of your IP, including inventions, is an important part of IP protection. The US Patent system follows "first to invent" compared to the "first to file" system followed by other countries. In situations where two inventors may have invented the same invention and filed a patent application within a few months of each other, the evidence(s) showing who invented first are crucial in determining who gets the patent. Thus, it is essential that inventors/applicants maintain a proper record of the invention, starting from the concept to the making of the finished invention. In a dispute, an inventor who can provide the evidence to invent first gets the patent. This includes evidence of first to get the concept and the evidence of first to make and use.

If you have a patentable invention, once you disclose it in public, you have to file an application within a year of disclosure if desiring a US Patent. Examples of public disclosure are: presenting at a conference, publishing a paper, presenting to a potential licensee, business partner or vendors, etc. It is highly advisable that before disclosing your IP, invention or research work, a determination must be made regarding if it is appropriate to file for a patent application.

The offer for sale or for public use is another scenario that needs attention. If you do not have a confidentiality agreement or a non-disclosure agreement ("NDA"), contractors—who do not technically qualify as employees—can use your information to develop a similar product or share information with another party (e.g. your competitors). If the IP is to be presented to a potential business partner or a licensee, having a NDA signed by the business partners or potential licensee is advised. Such an agreement is a legal contract between at least two parties to protect IP (such as an invention, trade secrets) or any other confidential information that one of the parties who is a party to the agreement shares with the other(s).

For additional Information, visit:

http://www.USPTO.gov - the official website of the United States Patent and Trademark Office.

http://www.stopfakes.gov - for a general discussion and frequently asked questions about IP.

http://www.copyright.gov -the official website of the United States Copyright office.