 Legal Best Practices
Magazine
Protect Your Idea$
Turning Ideas Into Value - Part IV
by Brent C.J. Britton
Published: September / October 2008
Every innovative company should establish internal
processes and controls for managing intellectual
property (IP). Once you have learned the ins and outs of
patents, copyrights, trade secrets, and trademarks, you
may decide that it is in your company’s best interests
to pursue IP protection for your company’s protectable
assets (inventions, works of authorship, proprietary
information, and brands). What happens next? How do you
go about deciding which assets to protect? How do you
determine whether your company has any IP assets worth
protecting in the first place? And once you obtain IP
protection, how do you keep track of it all? The
solution is to develop a good set of IP management
procedures that is responsive to these issues.
IP management is analogous
to financial management. Your company probably already
realizes considerable benefits from internal practices
and controls for monitoring cash flow, tracking
spending, and formulating financial strategy. Using a
similar system for tracking information and making
decisions about IP is similarly beneficial.
This month, let’s walk
through the basics of the first step in IP management:
disclosure.
IP Disclosure
Disclosure is a critical
initial step in IP management. Establish a process for
the disclosure and inventory of new creations and insist
that all employees follow it obsessively. Why? Because
you can’t protect what you can’t see! To best ensure
that creative assets get protected by IP, you’ve got to
train your employees to disclose their creations to you
so that a global inventory is maintained. What a tragedy
it would be for value to bleed out of your company
because you never pursued IP protection on a pile of
fallow assets that you never knew existed.
Disclosure of copyrightable
works is relatively straightforward. Any company whose
employees are in the habit of producing copyrightable
works of authorship other than software – such as
magazine articles, music, photographs, blog entries, and
such – ought to have a standard process in place by
which these employees send copies of each new work up
the management chain. Then a determination can be made
as to whether to send copyright registration
applications in to the copyright office in the U.S. or
any other jurisdictions.
New brands are unlikely to
slip through the cracks and remain inadvertently
undisclosed, as brands tend to be developed alongside a
larger effort to create a new product or service; they
rarely get created without management involvement or
awareness. Nevertheless, every new brand, logo, tagline,
and trade dress developed in your company should be
passed up the chain for inventory and analysis as to
whether and in what jurisdictions trademark registration
should be pursued.
For inventions and know-how,
use a simple invention disclosure form that collects
basic information about each new creation. The form
should be simple enough that your engineering staff can
fill it out quickly with minimal impact on their time,
yet comprehensive enough so that you can later decide
whether the new creation is strategically or
competitively valuable enough to move you to consider IP
protection for it. You can also decide at this stage
whether the new creation should best be protected as a
patentable invention or kept confidential as proprietary
information (or, for software, protected as a
copyrightable work). Great care must be taken to ensure
that all invention disclosures remain strictly
confidential until the chosen form of IP is pursued.
Impediments to IP Disclosure
Unfortunately, various
factors can impede the IP disclosure process. Filling
out an invention disclosure form is more than a simple
ministerial duty; it is a grand statement of authorship
and responsibility. “Hey everyone, look at me. I am
advancing the state of the art!” For all but those most
at ease with self-promotion, this task can be daunting.
We humans come from schools
of fish and herds of animals for whom blending in with
the group is a survival strategy and standing out from
the crowd can get you eaten. After millennia of honing
our pattern-matching instincts to avoid predators, we
favor the boring and we viscerally disdain things that
are crazy, unexpected, nonstandard, different, or
bizarre. Unfortunately, these are the very features that
denominate practically all new inventions and
innovations.
We can sometimes feel an
instinctive reluctance to stand up and claim credit for
new inventions because we’re not sure how our claims
will be met by those around us. We know that our peers
(and our superiors) can, justifiably or not, sometimes
feel threatened by our successes; they cannot imagine
their place in a world marked by the changes our new
innovation represents. When someone thinks his ox is
about to be gored, it is unrealistic to expect him to be
a terribly big fan of the invention (or inventor) doing
the goring.
The trick is to celebrate
and reward innovation at every level. Let it ring
through the halls of your company that those who create
IP are to be revered. Your creative staff should know to
a certainty that each IP disclosure will be judged on
its merits (keeping them anonymous can be a good idea
here). Demand faithful attention to preparing invention
disclosures as a job requirement for all creative staff.
Consider paying a special bounty to every employee who
is named as an inventor on an issued patent. Consider
significant salary bonuses for particularly prolific IP
creators.
In the long term, your IP
assets can, and probably will, be the most valuable
assets in your company -- but only if you are aware of
them. Do whatever it takes to ensure your IP assets are
being fully disclosed by those in your company who
create them. Next issue, we’ll cover what happens next.
Brent C.J. Britton is a
lawyer at the Tampa office of Squire Sanders & Dempsey
LLP, a global law firm. He practices intellectual
property and corporate law.
bcbritton@ssd.com
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