10 Common Intellectual Property Mistakes
1. Failing to identify your intellectual property and adequately protect it.
Have you identified your company's inventions? Have you analyzed whether they should be patented, maintained as trade secrets or disclosed? Have you identified your company’s trademarks and determined whether to register them? Have you identified your company's trade secrets and do you have suitable non-disclosure agreements in place? To establish a program to inventory your intellectual property, contact
Vidas, Arrett & Steinkraus.
2. Not informing your patent attorney of public disclosures of or offers to sell your invention which predate the filing of your patent application.
Inventions that have been publically disclosed or which have been the subject of an offer to sell, more than one year prior to the filing date of the related patent application cannot, as a matter of law, be patented in the US. Even if the disclosure occurred less than a year prior to your filing date, you have an obligation to inform the patent office of such disclosure. Your failure to make such a disclosure can constitute inequitable conduct rendering the patent unenforceable. In most foreign jurisdictions, inventions are not patentable if a public disclosure has been made prior to the filing of the patent application. If you must make a disclosure, protect yourself by having a confidentiality agreement in place. If you have any questions about whether you have made a public disclosure or an offer to sell or if you need to prepare a confidentiality agreement (often referred to as an NDA – non-disclosure agreement), contact
Vidas, Arrett & Steinkraus.
3. Copying material which is subject to a copyright.
Material which is subject to a copyright cannot be freely copied or redistributed. Permission to copy the material must be obtained from the holder of the copyright. The prohibition on copying includes materials on the web. There is a fair use exception but the exception allows only limited copying in certain circumstances. If you have any questions about whether you can copy material, please be sure to contact
Vidas, Arrett & Steinkraus.
4. Failing to establish who will own an invention prior to beginning a collaborative project.
Oftentimes, inventors including outside consultants, will collaborate on projects without having a clear understanding of who will own what. They assume that they will be able to sort out the ownership rights later on. Be certain to have the ownership rights worked out in advance. It is typically far less expensive to prepare an ownership agreement or assignment in advance than it is to litigate the issue later on. If you need help prepare an assignment, please contact
Vidas, Arrett & Steinkraus.
5. Mixing your proprietary software with Open Source software.
Including Open Source software in your proprietary software may violate the licenses associated with the Open Source software. If you have any questions about this, please contact
Vidas, Arrett & Steinkraus.
6. Not properly protecting your trade secrets.
Trade secrets should be transmitted only to those who have a need to know and only to those who have signed non-disclosure agreements. Also, see 1 above. For more information on how to properly protect your trade secrets, contact
Vidas, Arrett & Steinkraus.
7. Not evaluating your competition's and other third party's intellectual property rights.
Before you name a product, have you seen whether the name is already trademarked? Before you commit the resources for producing a new product, have you checked to see whether the product is likely to infringe the rights of a third party? To determine whether such an analysis is necessary, and to conduct such an analysis, contact
Vidas, Arrett & Steinkraus.
8. Assuming that your invention cannot be patented because you think it is obvious.
While you may be correct, the standard for obvious is a legal one and can involve considerations that the non-lawyer is now aware of. When in doubt, contact
Vidas, Arrett & Steinkraus to discuss your invention.
9. Filing unnecessary patent applications.
This is the opposite of number 8 above. Often times, companies file costly foreign applications in countries in which they neither manufacture nor sell their products. Companies also file applications which are not directed to their core products. While that may be appropriate in some situations, in other situations, it can distract the company from protecting their core products.
Contact Vidas, Arrett & Steinkraus to determine whether your patent strategy is on target and directed to protecting your core technologies in relevant jurisdictions.
10. (A three way tie)
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Not educating your employees about intellectual property rights;
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Not having a management program in place for your intellectual property;
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Not enforcing your intellectual property rights when you are aware of possible infringement.
A. If you are familiar with intellectual property issues but your employees are not, whether in research, sales, marketing or other parts of your company, you may be losing valuable intellectual property rights. Does your marketing staff know how to refer to your trademarks without rendering them generic? Do your sales people know when to get non-disclosure agreements? Do your inventors recognize when they have patentable subject matter?
B. Are you paying maintenance fees for patents that are no longer of value to you? Could you license your patents to a third party? Are you mismarking your products with inappropriate or expired patent numbers? Are you adequately using (and policing) your trademarks?
C. If you are aware of possible trademark infringement and you do not act in a timely way to protect your rights, you may lose the right to enforce the trademark against the infringer at a later date.
For more information about the above, contact Vidas, Arrett & Steinkraus.
Disclaimer
The information contained on this sheet is not, nor is it intended to be, legal advice. You should consult an attorney (hopefully us) for advice regarding your individual situation. We invite you to contact us and welcome your calls, letters and electronic mail. Contacting us does not create an attorney-client relationship. Please do not send any confidential information to us until such time as an attorney-client relationship has been established.