Intellectual Property Checklist for Startup Companies and Established Businesses

This simple checklist is intended to provide basic guidance to startup companies and established businesses in ensuring that they are taking the proper steps to identify and protect their intellectual property, as well as avoiding infringement of intellectual property owned by others.

Disclaimer

This website is intended to provide general information on the protection of intellectual property, and not legal advice for any specific situation. Every situation is unique, and no website can possibly consider the unique aspects of every situation, or provide the proper advice for each situation. Furthermore, many situations may be covered by state law and/or the laws of foreign countries as well as federal law, and laws vary from state to state or from country to country. I therefore encourage you to contact me to determine the best way to protect your inventions.

Inventions, products, and processes – patent and trade secret protection

• Employees – particularly engineers and scientists – should sign agreements requiring them to assign inventions made in the course of employment to your business. Inventions are owned by the inventor in the absence of an assignment. This assignment agreement ensures that your business can apply for patents claiming the business-related inventions of its employees.

• Negotiate and execute nondisclosure agreements with customers, vendors, and outside consultants so that they are obligated to protect your confidential information, and so that you are free to have discussions regarding customer needs and the best ways to meet those needs. Ensure that any disclosure of inventions prior to patent application filing are covered by a nondisclosure agreement, although filing patent applications prior to discussing inventions is strongly recommended.

• Consider performing freedom to operate searches before incurring significant expenses in research and development, and analyze patents owned by competitors before developing new products.

• Perform patentability searches to identify relevant prior art and to determine the likelihood of obtaining a patent soon after valuable inventions are identified.

• Have procedures in place to identify patentable inventions – particularly those that will provide a competitive advantage for your business – in advance of any offers of sale, publication, or other public disclosure.

• Document inventions by engineers, scientists, and other employees as well as communications with third parties about these inventions.

• Prioritize inventions so that those which are critical to your business are protected promptly by filing patent applications, and other inventions can be protected depending on available resources and other priorities.

• Discuss with your attorney which inventions are best protected by patent, and which are best protected by trade secret.

You should consider patent protection if:

• You need the strongest possible protection for your inventions, including protection from the possibility of independent discovery of your inventions by your competitors.

• Your inventions are potentially subject to reverse engineering.

• The limited duration of a patent (20 years from the filing date, subject to certain extensions of patent term) is acceptable.

You should consider trade secret protection if:

• You are willing to accept the risk that your competitors may independently discover your inventions.

• Your inventions are not easily subject to reverse engineering.

• You wish to keep your inventions secret for a time period longer than the period of enforceability of a patent.

• Your inventions have independent value derived from the fact that they are secret.

• You are willing to take steps to identify trade secrets and to protect the secrecy of these secrets.

• Consider prioritized examination for particularly valuable inventions or when a patent is needed quickly.

• Consider foreign patent filings when specific reasons exist for obtaining patents in specific countries.

• Maintain a calendar of critical dates for application filing, foreign filing due dates, amendment filing, issue fee payments, and maintenance fee payments.

• Mark your products with the applicable patent numbers so that you can maximize the monetary damages to which you are entitled in the event of patent infringement.

• Have procedures to locate and review patent filings by competitors so that any effect your business can be minimized through third party submissions.

More information about patents

Trademarks, service marks, and trade dress – your business name, product or service names, product appearance, and business reputation

• Before beginning use of any business name, product name, tagline, or logo, have a trademark clearance search performed to identify any other trademark that might raise the issue of likelihood of confusion.

• If the results of the trademark clearance search are favorable, then promptly file applications for federal trademark registration to preserve your rights to your trademarks.

• Maintain a calendar of critical dates such as statement of use due dates, declaration of incontestability due dates, and renewal due dates for all registered trademarks and trademark applications.

• Use the ® symbol with all registered trademarks to give notice of the registered status of the trademark and to preserve your ability to collect monetary damages for trademark infringement.

• Limit use of competitor trademarks to the minimum extent necessary to accurately describe your competitor’s goods or services.

• Avoid use of competitor trademarks in Metatags and other search engine optimization techniques.

• Act promptly to stop the use of trademarks that create a likelihood of confusion with your trademarks.

More information about trademarks.

Copyrights

• Licenses should be obtained for any significant use of material created by third parties within materials created by your business. For some forms of expression, such as music, even small uses can risk copyright infringement.

• Copyright applications should be submitted for books, user’s manuals, advertisements, musical compositions, visual displays, or other original creative expressions being generated by your business. For software, consider both copyright registration and patent applications. Applications for registration should be filed before publication, public distribution, or providing the materials to third parties.

• Place copyright notices on any original creative expression to preclude an innocent infringer defense.

• Document and maintain records of any communication of copyright protected materials to third parties. If the third party attempts to wrongfully use the copyright protected material, such records will help to prove access to the materials, simplifying proof of copying.

• If you play music or feature musicians in your business, obtain copyright licenses or ensure that copyright licenses are obtained by the musicians.

• If your business prepares software using publicly available code or code created by others, determine whether any of the code is subject to copyright or covered by a license agreement. Even a license agreement that is categorized as “open source” can impose requirements on how programs containing such code is distributed. Some open source license agreements require only that portions of your source code covered by the open source license are made available, while other licenses obligate you to reveal all source code, including your own source code when distributing your software.

• Any photographs or images used on your website must be appropriately licensed or in the public domain. Ensure that the copyright license permits use on a business website.

• Before providing a copy of software to any employee, installing a copy of the software on an employee’s computer, or permitting the employee to install software on a computer, ensure that your business has copyright licenses for an adequate number of users of the software.

• Pay careful attention to the audit provisions (and other provisions) of software license agreements, and attempt to negotiate reasonable provisions where possible.

• If you include any third party generated content (for example, customer comments) on your website, have policies in place to take advantages of the safe harbors of the Digital Millennium Copyright Act. Have a designated agent to receive such notices, and provide the designated agent's contact information on your website as well as the DMCA Designated Agent Directory of the US Copyright Office. Act promptly in response to any notice you receive alleging copyright infringement, defamation, or other content that could result in liability.  You can learn more about the Digital Millenium Copyright Act here.

• Wireless Internet connections should be password protected to prevent illegal activity by third parties.

• Employees should be prohibited from using music or movie file sharing websites at work or on business-owned computers or mobile devices.

More information about copyrights.

Trade Secrets

• Evaluate new and/or critical inventions for patent or trade secret protection.

• Identify trade secrets as such.

• Disclose trade secrets only on a need to know basis. Each employee should only know as much about a trade secret as necessary to perform that employee’s job, and nothing more.

• Require employees to sign confidentiality (and possibly noncompetition) agreements when hired.

• Ensure that customers, vendors, and business partners sign confidentiality agreements prior to disclosure of trade secrets or portions of trade secrets.

• Control access to your business facilities during normal business hours.

• Utilize locks and alarm systems during non-business hours.

• Store sensitive information in locked containers.

• Password protect computers.

• Encrypt computer drives.

• Utilize antivirus, firewall, and anti-spyware software.

More information about trade secrets.

Ornamental designs and aesthetic aspects of products

• Distinguish the appearance of your products from those of your competitors so that customers learn to see the appearance of your products as an indicator that your business is the source of the products.

• Consider both design patent applications and copyright registration before public disclosure or distribution of your designs. Design patent applications are more appropriate for useful articles, while copyright registration is more appropriate for purely aesthetic articles. For some articles, such as jewelry, both design patent applications and copyright registration may be appropriate.

• Consider filing an international design patent application if your business has reasons to seek protection in specific foreign countries. Such applications must be filed within six months of the US design patent application in order to claim the benefit of the US design patent application’s filing date.

• Consider trade dress registration once a product’s appearance has become well known and serves to identify the product as originating from your business.

Names, Images, and Likenesses of Celebrities

• Recognize that celebrities such as athletes, models, actors, musicians, etc. have a commercial value associated with their names and likenesses. Wrongful appropriation of this value can result in liability for violation of the right of publicity.

• Even if you have a copyright license to use a photograph or other depiction of a celebrity, you may also need a license to utilize that celebrity’s name, image, and likeness.

• Consult with an intellectual property attorney about whether your intended use of a celebrity’s name, image, or likeness qualifies as reporting of newsworthy events.

• Consult with an intellectual property lawyer about whether your intended use of a celebrity’s name, image, or likeness is sufficiently transformative to quality for First Amendment protection.

Read more about the right of publicity here. Please contact me with your questions and needs.