Article written by Christopher A. Jethrow – published in Crain’s on March 15, 2021. Read on Crain’s.
Among the many assets of a business, intellectual property (IP) is one asset that can give a business a technological advantage over competitors. For that reason, it is important to understand: 1) How to identify IP assets; 2) How to guard IP assets and 3) When to file for formal protection.
IDENTIFYING IP ASSETS: Businesses are constantly creating IP assets. These assets can be generated by scientists/engineers in research and development, technicians on the manufacturing floor, sales and marketing personnel in the office and service technicians in the field. Businesses should be prepared to help all employees recognize their potential to be an IP generator.
While those in research and development are usually well aware of their role in the generation of IP, those outside of R&D often receive little training in appreciating the impact they have on IP creation.
Manufacturing processes can introduce new assembly methods, new tooling and new software, while marketing can create new brand names, logos and slogans — each a potential source of new IP. Proper training will educate and energize all employees and give them the skills to quickly identify potential IP.
GUARDING IP ASSETS: Once IP is identified, determine if it is worthy of protection and make note of the people involved in the IP and whether outside resources are required for development. Too often businesses engage outside resources to quickly develop new products and processes. However, hasty disclosures to such outside sources may diminish or jeopardize potential IP rights.
Before sharing any information with any outside resource, prepare and execute a confidentiality and non-disclosure agreement. A joint development agreement may be necessary if the outside resource contributes to the development of the IP. These agreements are critical to maintaining or identifying proper ownership of the IP.
In addition to preventing the unprotected sharing of IP to outside sources, periodic internal reviews/training sessions will help ensure that your IP assets are not unintentionally exposed or publicized by employees.
Lab notebooks, emails, meeting minutes, and video calls are all places where IP can be documented and recorded, and if not properly secured, may be misappropriated or otherwise released unintentionally to the public.
FILING: Once potential IP assets have been identified, then the time may be ripe to engage an IP attorney to discuss protection options in the U.S. and other countries, if desired.
The IP attorney should be consulted as soon as possible to determine the best way to safeguard those assets even if development is ongoing and more time is needed before a filing can be made.