Article
Modern General Counsel: Protecting company intellectual property
Protecting a company’s intellectual property is critical to the success of the business. It is the job of in-house counsel to ensure that the company takes the right steps to protect and create these assets. Failing to have the right agreements, policies, training, and plans in place can mean trouble — fortunately, there are a number of things you can do as general counsel (GC) to help the company protect its intellectual property. Practical Law can help you easily and inexpensively put those plans, agreements, and policies in place.
The “Big Four”
There are four types of intellectual property (IP) general counsel needs to protect: patents, trademarks, copyrights, and trade secrets. Each type of IP confers different types of benefits to the company and is protected in different ways. See Practical Law’s Intellectual Property: Overview.
Key agreements
Core to any strategy to protect IP is ensuring you have several key agreements in place — and that you regularly review and update those documents. These include:
- Licensing agreements – Stand-alone or proper clauses in contracts to properly state and limit the rights of customers/others to utilize the company’s intellectual property. See Practical Law’s Software Licensing, Development, and Distribution Tool Kit and the standard API Licensing Agreement.
- Invention disclosure/assignment agreements – Require employees to disclose any IP they claim they own before joining the company and acknowledge that any IP developed while an employee using company time or resources belongs to the company. See Practical Law’s IP Rights Clauses for Employee Agreements.
- Work-for-hire agreements – Agreements that clarify when work performed by independent contractors and others belongs to the company versus the individual.
- Non-compete agreements - To prevent key employees from working for a competitor. See Practical Law’s Drafting an Employee Non-Compete Agreement: Best Practices Checklist.
- Non-solicitation agreements – To prevent former employees from cherry picking company employees with offers of a new job.
- Non-disclosure/confidentiality agreements – For use both with internal and with third parties. See Practical Law’s Confidentiality and Nondisclosure Agreements.
See, also, Practical Law’s Intellectual Property Rights: The Key Issues and Intellectual Property: Employees and Independent Contractors.
Have a process to develop intellectual property
Every company should have processes in place to develop and protect patentable inventions, trademarks, copyrightable materials (such as software), data, APIs, and good old-fashioned trade secrets. A patent harvesting committee is, for example, an excellent idea for most companies. See Practical Law’s Patent Portfolio Development and Management and Intellectual Property Licensing Toolkit.
Key policies
As GC, you should ensure you have the right policies in place to educate and guide employees about how to protect company IP and to ensure they respect the IP of other parties. Such policies should include:
- Proper marking of documents and materials deemed confidential
- Handling company IP and confidential information
- Social media
- Use of open source software
- Developing intellectual property like patents and trademarks
- Use of third party’s IP, such as copyrights
- “Bring Your Own Device” policy
- Procedures for providing and receiving confidential information to/from third parties.
See Practical Law’s Employee Confidentiality and Proprietary Rights Agreement and Corporate Patent Policy.
Training
Training your employees on how to protect IP is important. A comprehensive training program around confidentiality, information security, contracting, and trade secrets will help your company create and protect its IP. Likewise, ensuring employees know how to treat the IP of others can prevent problems and litigation.
The best training includes real-life examples of issues, such as using images found on the internet and the risk of violating copyrights. Regular company-wide email reminders from the legal department about intellectual property issues are helpful too. See Practical Law’s Intellectual Property Basics: Presentation Materials, Open Source Software, and Copyright Protection and Use Training: Presentation Materials.
Enforce your rights
Agreements, policies, and a well-trained workforce are great but it’s all for naught unless you have a plan for how to enforce the company’s rights in its intellectual property. See Practical Law’s Legal Protection of Software. Sometimes litigation is necessary to protect IP rights which can involve the courts or government agencies — see Practical Law’s Trademark Enforcement Toolkit and Patent Litigation: Pre-Suit Considerations Checklist for examples.
Protecting the company’s intellectual property should be a primary goal for general counsel. Prevention of problems is key, but a willingness to go to bat to enforce your rights should always be top of mind with in-house counsel. Practical Law makes it easy to get the right policies, training, and procedures in place along with guidance on how to enforce IP rights when necessary.
About the author
STERLING MILLER, HILGERS GRABEN PLLC
Sterling Miller is a three-time general counsel who spent almost 25 years in house. He has published four books and writes the award-winning legal blog, Ten Things You Need to Know as In-House Counsel. Sterling is a frequent contributor to Thomson Reuters as well as a sought-after speaker. He regularly consults with legal departments and coaches in-house lawyers. Sterling received his J.D. from Washington University in St. Louis.
Check out the Startups and Small Businesses Collection on Practical Law