Patent & Trademark Attorney
Protecting New Technology in Our Ever-Changing World
Here are 4 Steps Every Business Should take in Protecting their Intellectual Property
Technology is constantly being developed and improved. For example, most people have a $500+ phone in their pocket. There are also automobiles, refrigerators, televisions, and even washing machines with Wi-Fi and touchscreen abilities. As these new technologies are emerging, businesses should understand how important it is to protect themselves and their business investments.
1. File Patents at the Right Time: A patent is a form of intellectual property that gives its owner the legal right to exclude others from making, using, selling, or importing the invention into the United States without the owner’s permission. The decision on when to file a patent application can have a signification effect of the enforceability of any patent that is ultimately issued. The implementation of the “first-to-file” patent system in the United States has significantly changed the patent application process by stipulating that an applicant that files a patent applicatio first, regardless of the date of invention, is entitled to the patent rights and protections afforded by the Patent and Trademark Office. This has significant weight in Protecting Your Ideas.
While early filing is clearly advantageous to secure an early filing date, the patent application must include a complete description of the invention and enough information to allow a third party to make and use the invention without undue experimentation. Ultimately, a well-developed invention with sufficient research should be considered for early patent application filing. A provisional patent application provides the owner with a one-year period before they are required to submit the formal, nonprovisional patent application. Filing of the provisional patent application establishes the patent priority date, allowing the owner to enjoy the benefits of the early filing system. Importantly, the 1-year period provides owners with the opportunity to assess the viability of the invention and conduct testing before incurring the expense of a nonprovisional application one year later.
2. Plan for Ownership: Technology companies typically are started or run by more than one person. Even if the business partners are relatives, best friends, or spouses, it is vitally important to have a partnership agreement in place to deal with the inevitable issues that arise during the running of a business. The agreement should set out what each partner will contribute in terms of labor, time, money, customers, etc. The agreement should further clearly set out compensation, including how much each partner will be paid, how profits will be distributed, and what to do with extra profits. Unfortunately, relationships often end due to death, retirement, or divorce, so any partnership agreement should detail how ownership interests are divided when a partner exits. Further, the decision-making structure of the business should be clearly defined – i.e., can a single partner make a decision, what type of decisions require unanimous votes, etc
3. Employee Protection: When technology is involved, there is a certain level of risk. The best way to protect loss of intellectual property via employees is through employment contracts. When proprietary information is shared with employees, it’s imperative to have a nondisclosure agreement in place. Nondisclosure agreements protect confidential business information, such as customer lists, trade secrets, innovations, and financial forecasts from being disclosed to the public. The employment contract should also clearly define the relationship between the business and the employee, as well as the expectations of the business owner. The employment agreement should clearly set out intellectual property ownership interests and require the employee to agree that all innovations developed as a result of employment are the property of the business. Further, new businesses should consider including noncompete clauses in their employment contracts to prevent an employee from leaving with customers and setting up a competing business.
4. Protective Marketing: Until the technology has been protected through the filing of a patent application, it is best to keep all disclosures of the technology confined to a small group of individuals within the company. Once the patent applications are filed, the technology can be safely disclosed through marketing, press releases, and other similar venues. If there is a public disclosure of the technology prior to the filing of the patent application, the owner has a one-year time period to file for patent protection. However, to obtain patent protection in most foreign countries, a patent application must be filed prior to any disclosure to the public. In other words, in most foreign countries, there is no one-year grace period like there is in the United States. What does this mean? Business owners should take steps to ensure that new technology is kept secret and that no public disclosure occurs before filing a patent application.
Protecting your hard work is incredibly important. In the long run, it will protect your financial future.
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Intellectual property is often our clients’ most valuable asset and raises the most complex issues. Dogwood Law places emphasis on cost-effective counselling of clients. Whether you are just starting or have years of experience we can meet with you for a free consultation.