Protecting Intellectual Property
The company’s intellectual property may be one of its most important – if not its most important – assets and therefore needs to be protected on a priority basis.
Apart from protecting (i) proprietary information and inventions developed – or otherwise accessed – by an employee (see “Proprietary Information and Inventions Agreement” referenced in EVENT 3: Service Agreements with Employees and Consultants and (ii) confidentiality agreements included in Consulting Agreements, there are 4 kinds of protectable Intellectual Property:
- Trade Secrets (under applicable law) and contractually protected “Proprietary Information” which does not constitute a Trade Secret)
What You’ll Get
Preliminary analysis and review of the particular nature of the Company’s existing or anticipated Intellectual Property and a recommendation as to the preferred way – and estimated cost – to protect it.
Trade Secrets and Unilateral and Mutual Non-Disclosure Agreements
A Trade Secret is any information that: (i) derives independent economic value, actual or potential, from not being generally known to the public or to other persons who can obtain economic value from its disclosure or use; and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. It is protected under the California Uniform Trade Secrets Act, and that protection can continue indefinitely as long the statutory requirements are met.
The Unilateral Non-Disclosure Agreement and the Mutual Non-Disclosure Agreement are identical; except, that one is intended to protect disclosures by only one of the parties and the other is intended to protect disclosures by both of the parties. These agreements are a Documented Core Legal Solution that can provide evidence of diligent protection of Trade Secrets as well addressing various other material legal issues relating to the protection of other confidential business information which are not Trade Secrets (“Proprietary Information”) and the following obligations of the receiver thereof:
- Hold Proprietary Information in confidence and take reasonable steps to protect.
- Not to disclose Proprietary Information to any third party.
- Not to make any use of Proprietary Information other than permitted by agreement.
- Not to copy or reverse engineer Proprietary Information.
- Not to export or reexport Proprietary Information in violation of applicable law.
- To return Proprietary Information immediately upon request by the discloser.
A standard exception makes all of the foregoing “Proprietary Information” obligations inapplicable to information that the receiver can document (i) is or becomes (though no improper action or inaction directly or indirectly by the receiver) generally available to the public, or (ii) was in the receiver’s possession or known to it without restriction prior to receiving it from the discloser, or (iii) was rightfully provided to receiver by a third party, or (iv) was independently developed by receiver without use of any Proprietary Information.
A trademark is a word, phrase, symbol, or design that distinguishes the source of the goods of one business from its competitors. Trademark rights are acquired by use; however, registration with the USPTO makes it easier to enforce those rights. Before registering a trademark, it is prudent to search state and federal databases to make sure that someone else is not already using your proposed trademark. For more information, visit the U.S. Patent and Trademark Office (USPTO) website (www.uspto.gov).
Copyrights protect original works of authorship (e.g., music, literature, screenplays and computer software). A copyright holder has the exclusive right to adapt, reproduce and distribute such a work. A copyright comes into existence at the time the work is created and lasts for the life of the author plus 70 years. Registration of the work with the U.S. Copyright Offices makes the holder eligible for statutory damages and attorney fees in a copyright infringement suit. For more information, visit the U.S. Copyright Office website (www.copyright.gov).
A patent grants a monopoly to the patent holder with respect to making, selling and/or using the patented invention. To obtain a patent, an application is filing with the U.S. Patent and Trademark Office (USPTO).
There are 3 types of patents: utility, design and plant.
Utility Patent: A utility patent is the most common type of patent. It lasts 20 years and covers inventions (i) that are processes, machines, articles of manufacture, or compositions of matter, or improvements thereof and (ii) that are novel, non-obvious, and have some usefulness.
Design Patent: A design patent lasts 14 years and covers original and ornamental design for an article of manufacture.
Plant Patent: A plant patent lasts 20 years and covers new varieties of asexually-produced plants.
Patent applications are expensive to file and maintain, in terms of both legal fees, filing fees and periodic fees to maintain previously granted patents.
For more information about patent applications, go to the USPTO website (www.uspto.gov).
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