October 28, 2008

The development and exploitation of intellectual property assets never stops. As a result, IP issues tend not to follow the typical 12-month cycle of, for example, tax planning and wealth transfer strategies. Patent, trademark, copyright and other IP prosecution and enforcement efforts generally fall under internal, corporate timelines designed to take maximum advantage of legal protections and business opportunities.

However, the end of the calendar year does provide an ideal opportunity to incorporate internal IP audits as a part of normal, periodic business planning. In addition, with the uncertainties of the current business environment and in some instances, a substantial decline within certain industries, it is more important than ever to protect your assets and police those that would use your inventions, ideas and goodwill for their own benefit. The following are some steps that businesses can take in order to ensure that their IP portfolios are fully protected.

Review Provisional and Utility Patent Applications

For inventions that were developed throughout the year, have you filed provisional patent applications or utility patent applications? Inventors have only 12 months from the date of publication to file on the invention before it becomes material in the public domain. For companies or individuals that have previous provisional applications on file, it is also a good time to consider whether to move forward with utility applications.

Audit Marketing Materials for Potential Trademarks

Examine advertising and other marketing materials to make sure you have sought proper trademark protection and that specific marks haven't fallen through the cracks. If appropriate, consider international trademark protection.

Ensure Timely Renewal of Patents, Trademarks and License Agreements

Check to see that you have properly filed all necessary renewals for patents and trademarks in order to guarantee ongoing protection. Likewise, examine license agreements to make sure you are aware of pending renewals or terminations.

Run Trademark and Patent Searches

Check for potential trademark and patent infringement. If owners fail to adequately police a trademark, they may lose rights in the mark. With respect to patents, a third party could be utilizing an invention without permission and payment of a royalty, both of which may be detrimental to your business.

Examine Third-Party Relationships

Make certain that you have entered into effective confidentiality, work-for-hire and license agreements. Such agreements clearly spell out ownership of a company's intellectual property; define acceptable use of data, processes and protected information by vendors and other service providers; and help ensure that an owner's rights are not lost as a result of a failure to strictly define its intellectual assets.

This article contains material of general interest and should not be construed as legal advice or a legal opinion on any specific facts or circumstances. Under applicable rules of professional conduct, this content may be regarded as attorney advertising.