Protecting Your Clients' Intellectual Property:  A Practical Guide
By Raymond D. Norton

Starting, managing, and developing a business is not easy, and "intellectual property" is but one of many items competing for your client's time and attention. However, intellectual property warrants this attention as it clearly contributes directly to your client's bottom line by providing for name recognition, enhancing his or her company's reputation, and, in general, making life difficult for "the competition".

To assist your client in the organizing of their intellectual property protection efforts, a checklist is provided below. This list should not be considered "all inclusive" or a substitute for legal advice, but rather, a starting point or structure for identifying and securing intellectual property rights.

1. Identify your client's intellectual property: The following definitions, while (fairly) concise, provide client's with a basic understanding of the various forms of intellectual property and protections afforded by each protection methodology.

a. Patentable inventions may include chemical compositions and processes, software processes, machines, tools, manufactured articles, and many other processes and devices. Patents only cover inventions that are "new", "useful" and "not obvious", but each of these phrases has a detailed legal meaning that may not reflect its everyday meaning. The scope of patent protection for an invention arise from the "claims" in the patent.

Utility Patents: Are granted to anyone who invents or discovers any new useful process, machine, manufacture, or composition of matter.

• e.g. process - cracking petroleum into its fractions
• manufacture - toys, utensils, surgical tools, pen
• machine - humidifier, sterilizer
• composition of matter - alloys, drugs

Design Patents: Are granted to any person who has invented a new, original and ornamental design for an article of manufacture. Only the appearance of the article is protected.

•  e.g. tennis shoe, lamp shade

Plant Patents: Are granted to any person who has invented a new asexually reproduced plant.

b. Copyrightable material relates to not to an idea, but rather to the manner in which the is expressed in a piece of work (material). Copyright does not protect the idea itself. Example of copyrightable material would include original literary works, e.g. novels, instruction manuals, computer programs, lyrics for songs, articles in newspapers, some types of databases, but not names or titles original dramatic works, including works of dance or mime; original musical works; original artistic works, e.g. paintings, engravings, photographs, sculptures, collages, works of architecture, technical drawings, diagrams, maps, logos; published editions of works, i.e. the typographical arrangement of a publication; sound recordings, which may be recordings on any medium, e.g. tape or compact disc, and may be recordings of other copyright works, e.g. musical or literary; films, including videos; and broadcasts and cable programs.

c. Trademarks include names, slogans, logos, colors, shapes, smells, jingles, and other "marks" used to identify the source of a product; service marks include the same only as they are used to identify the source of a service. Trademark and service mark protection is intended to prevent confusion or deception in the marketplace.

d. Trade secret law varies from state to state, but trade secrets may be generally viewed as any formula, drawing, blueprint, pattern or compilation of information which is used in a client's business and provides an opportunity to obtain an advantage over the client's competitors who do not know or use the trade secret. A trade secret necessarily requires reasonable steps be undertaken to render a process or method protectable.

e. Contract rights are not always thought of when intellectual property rights are considered, but they should be. Intellectual property rights are often sold, licensed, and affected by contract language.

2. Determine who owns the "client's" intellectual property. If your client is starting a new business after working for someone else, his or her employer might have rights in the client's intellectual property. The same is true if your client is a student who performed research work for a university, or if your client hired an independent contractor to develop/create intellectual property. In general, if a third party assisted your client in inventing or creating intellectual property, ownership may be divided or unclear, even if they are one of your client's full-time employees.

3. Having identified your client's intellectual property and who owns it - determine "if" you should protect it. Securing patent protection for software technology or a "business method" might easily take 24 to 30 months. Determine if the methodology or technology would have residual value at the end of this lengthy period. Perhaps, trade secret protection might be serve as a viable alternative.

4. Identify your client's markets, allocate protection budgets, and estimate timing. Intellectual property laws differ from country to country. In some situations, your client's will lose rights if you do not plan ahead. For instance, the United States provides a one-year grace period in which to file a patent application after making your (client's) invention public, but most other countries do not. In other situations, a limited delay will not destroy rights and may save your client initial filing fees. By taking advantage of international agreements, it is often possible to preserve foreign intellectual property rights while postponing for months or years some of legal expenses associated with those rights.

5. File for protection. File whatever combination of the following is appropriate for your client's circumstances: provisional U.S. patent application, a non-provisional U.S. utility patent application, PCT or other foreign patent application, U.S. design patent application, copyright applications, trademark and service mark applications, state trade name registrations, and Internet domain name registration.

6. Contract for protection. Put in place an appropriate combination of the following contracts: an employee agreement to assign inventions, a non-compete agreement, a non-disclosure agreement, an assignment of rights to remove ownership questions, licenses to obtain rights to use intellectual property, and licenses to grant rights to use intellectual property.

7. Enforce your client's intellectual property rights. You may use cease-and-desist letters, negotiations, complaints filed with a court but not served, full-fledged litigation, and other legal tools, as well as technical and business tools at your disposal.

8. Maintain your rights. In addition to enforcing them, do not forget to renew your client's trademarks and pay patent maintenance fees.

9. Don't stand still. Repeat steps 1 through 9 continually to identify intellectual property assets which add value to your client's business......and protect them.

About the Author
Mr. Norton's intellectual property practice emphasizes software technology protection, licensing, contract negotiation, technology transfer, copyright, trademark and patent matters. Prior to entering private practice in Tulsa, he was employed for 30 years with American Airlines and The SABRE Group and served in a number of diverse engineering, executive and legal positions, including Managing Director of Intellectual Property Protection and Contracting Services. He is licensed in Oklahoma and Texas, Oklahoma Federal District Courts and the Federal Court of Appeals.