Intellectual Property for Business Owners: A Protective Checklist
You have created something valuable if you have intellectual property. Intellectual property refers to a work or invention that is the result of creative ideas. It also includes confidential information.
Do you know how to protect your rights to your intellectual property? It is crucial that your business has an intellectual property strategy (IP strategy) as part of its business plan. An IP protection strategy sets the framework for protecting your intangible assets. Our Maryland business attorney at Thienel Law provides this proactive intellectual property checklist for business owners to help them avoid the most common mistakes startups and seasoned businesses make when creating an IP protection plan.
1. Understand Different Types of Intellectual Property (IP)
First, you need to identify which types of IP are relevant to your business. Most intellectual property falls into one of four categories: patents, trademarks, copyrights, and trade secrets. It is essential that you learn the basics of each type of IP to understand what can be protected. The type of IP asset impacts your intellectual property rights and the steps you must take to protect intellectual property.
2. Conduct an IP Audit
Before you can take steps to protect intellectual property, you must know what you have to protect. An IP audit identifies your existing and potential IP assets and original ideas.
Examples of the types of intellectual property you may need to protect include, but are not limited to:
● Logos
● Product designs
● Innovative processes
● Computer programs
● Inventions
● Brand
● Proprietary knowledge
● Trade secret
● Digital assets
● Creative works
● Utility patents
● Literary and artistic works
● Domain names
● Other business ideas and create ideas
Once you identify IP assets, determine the status of each IP asset and create an IP checklist. It is protected, pending, or unprotected. Once you know what IP assets need legal protection and their current status, you can move forward with the next step – protecting your IP assets with trademarks, patents, copyrights, and legal agreements.
3. Protect Your Trademarks
A trademark is a phrase, symbol, or insignia that is recognizable as representing a product or service. It separates the product or service from the competition.
Perform a trademark search to ensure your brand name or logo isn’t already in use. Then, apply for trademark registration to protect brand identity. However, obtaining a trademark is the first step in protecting your intellectual property. You should also plan to monitor and enforce your trademark rights to prevent unauthorized use.
4. Secure Your Copyrights
A copyright provides an author or creator of original material the exclusive right to use, duplicate, or copy their material. Your IP asset audit should have identified all original works that need legal protection. Copyright protection also gives you the exclusive right to let someone use your material through a licensing agreement.
Register copyrights through the U.S. Copyright Office. Have a procedure that ensures you mark all copyrighted materials with the copyright symbol and the year of first publication to enhance your legal protection.
5. Apply for Patents
A patent bestows an inventor the exclusive legal right to use or manufacture their invention for a set period. Patents are granted through the U.S. Patent and Trademark Office. The first step is to evaluate which inventions and innovations are eligible for patent protection.
Then, file for provisional or non-provisional patents. The patent process is more complicated and requires more technical and legal expertise than copyrights and trademarks. Therefore, consulting with a patent attorney to discuss the feasibility and strategy of patenting your inventions is beneficial.
6. Safeguard Trade Secrets
A trade secret is information that:
● Has potential or actual economic value because other parties are unaware of the information
● Is valuable to other parties who cannot legally obtain the information; and,
● Is kept a secret through reasonable efforts of the owner.
Identify information that qualifies as trade secrets, such as recipes, formulas, customer lists, designs, instruments, processes, methods, and practices. The information is usually the product of your company’s research and development.
You do not register trade secrets with the government. Instead, you must implement security measures to keep trade secrets confidential. Examples of measures you would take to protect trade secrets and confidential information include:
● The use of legally binding contracts that include a non-disclosure agreement and confidentiality agreement
● Secure trade secrets and control physical access to trade secrets
● Limit access to only employees who require the information to do their jobs
● Train employees on how to handle confidential information and trade secrets
● Mark all materials that are trade secrets as confidential
● Require outside parties and vendors to sign confidentiality agreements
● Review the activities of employees with access to trade secrets to ensure they do not remove information from the premises
You must periodically review your policies and procedures for confidential information and trade secrets to ensure the highest level of intellectual property protection for this IP asset.
7. Manage IP Internally
Protecting intellectual property begins with the diligence of company owners and employees. Educate your team about the importance of IP and how to protect IP. They cannot protect intellectual property unless they understand what is included in your IP inventory and the steps required to protect it. Establish internal IP policies and procedures for handling and protecting IP and rigorously enforce the rules.
8. Monitor IP Use
An integral step in IP protection is to monitor IP use. Set up a system to regularly check for intellectual property infringements online and offline. Companies can use technology tools to detect unauthorized use of their IP assets, such as watermarking software, reverse image search engines, digital rights management systems, and plagiarism checkers.
Numerous companies specialize in IP monitoring services. You can also set up notifications and alerts that inform you of infringement or suspicious activities to enhance intellectual property protection.
9. Enforce Your IP Rights to Protect Intellectual Property with Legal Action
United States law provides criminal, civil, and border enforcement of intellectual property rights. You can report intellectual property theft to the government through the National Intellectual Property Rights Coordination Center. However, the owner of the intellectual property is responsible for taking steps for civil enforcement of IP rights. Civil remedies can include:
Injunctions
You can petition the court for injunctive relief to stop someone from using your intellectual property without authorization. An injunction aims to stop unauthorized use of your IP assets and prevent future infringement. Courts may issue a temporary injunctive order to stop the use of intellectual property while the infringement lawsuit is decided. Courts may also issue permanent injunctions to prevent future infringements.
Statutory Damages
Intellectual property laws provide remedies for infringement of intellectual property rights. The damages are set by law based on the facts and circumstances of the case. The goal is to compensate the owner of the intellectual property for the infringement without requiring the owner to prove actual damages. Additionally, statutory damages can act as a deterrent against using intellectual property without the owner’s consent.
Actual Damages
Owners of intellectual property can seek actual damages in an infringement lawsuit. They must prove that the infringement caused measurable financial losses. The amount of the actual losses depends on the facts of the case.
Court Orders
A court may enter other orders to stop or prevent the infringement of intellectual property rights. For example, the court may order the destruction of products that infringe upon an owner's IP rights to prevent further unauthorized use of the intellectual property. The court may order enforcement of non-disclosure agreements, award attorney’s fees, and grant other relief as the result of an infringement suit.
Work with a Maryland business attorney to develop an enforcement strategy for dealing with IP infringements to protect your ownership rights. An intellectual property attorney can also help you pursue legal action against infringements, ranging from cease-and-desist letters to intellectual property litigation if necessary. It is crucial that you enforce your IP rights as soon as you detect infringement activity.
10. Review and Update IP Protections
Developing a strategy to protect intellectual property is not something you do once and never revisit. Regularly review your IP strategy and update it based on new business needs or changes in intellectual property law. You must also periodically reassess your intellectual property portfolio to add new items or remove outdated protections. Protecting intellectual property requires ongoing efforts. A company that becomes complacent could miss infringements of its intellectual property rights, leading to a substantial loss in company profits.
11. Consult Intellectual Property Professionals
Intellectual property infringement can have costly consequences for businesses. Understanding how to protect intellectual property and enforce intellectual property rights is essential. One way to ensure you are doing everything right is to engage with IP attorneys or consultants for expert advice. They help you handle complex intellectual property matters effectively to safeguard your valuable IP assets.
Regularly discuss new developments in IP protection and ensure compliance with current intellectual property laws with a Maryland business attorney. They can help you assess the situation, navigate complicated laws, and provide tailored legal services to safeguard your rights.
Contact Our Maryland Business Attorney for More Information about Protecting Intellectual Property Rights
Attorney Steve Thienel of Thienel Law has extensive experience in matters related to business law, including assisting businesses and entrepreneurs in protecting their intellectual property. Contact our office today to discuss how we can help you develop an IP asset strategy to prevent your confidential information and intellectual property from being used without your authorization.
The above checklist does not constitute legal advice. Our Maryland business lawyer is available to discuss your specific situation to develop a plan to help you protect your IP assets in a competitive landscape.
