| n SKINNER AND ASSOCIATES |
|
|
|
|
|
FAQs FOR GENERAL PRACTICE ATTORNEYS
FREQUENTLY ASKED QUESTIONS (FAQs) FOR GENERAL PRACTICE ATTORNEYS
1. What is my business clients' Intellectual Property (IP) ?Your client's IP can include its company name, the marks (names) of its products and services, its marketing material, potential exclusive rights to significant products and manufacturing processes therefor, customer lists, and copyright rights to business artwork, packaging, labels, advertising material, and Websites. IP may arise from the work of the client's employees, be generated by contractors, or may be acquired from others by sale or license. Back to Top2. What should my clients do to manage their IP?Virtually every business has IP that can be easily and inexpensively protected by trademark, copyright, and trade secret legal theories and tools. At a minimum, your clients should take reasonable measures to document and organize their IP, control it's dissemination (i.e. trade secret and security measures, and confidential disclosure agreements), give notice to other parties and the public of their claim of rights (i.e. copyright © notices and trademark ™ designations), and perfect important rights via governmental registration (i.e. apply to register significant copyright material and marks (®)). Clients who generate inventions should document the substance and timing of inventions. There is no absolute maximum management system. Examples of substantial management efforts include aggressively filing and prosecuting patent applications (including applications outside the US when pertinent), filing trademark and copyright registration applications, branding programs, recordation of ownership rights, trade secret and security programs, contract programs, intellectual property audits, due diligence programs, search/monitor systems, and enforcing IP rights via litigation if necessary. Relationships regarding IP with Vendors/suppliers and customers should be managed by way of agreements. For example, vendors may seek to limit the customer's ability to reproduce or alter a product such as software they purchase. On the other hand, customers may obtain an indemnification and hold harmless agreement that the vendor will protect the customer from IP infringement claims of 3rd parties. The client's products or activities may infringe the IP rights of its competitors. In general, copyrights and trade secrets cannot be accidentally infringed, but trademarks and patents can. Searching is one means of preventing accidental infringement of trademarks and patents. Importantly, establishing ones own IP does not necessarily protect one from infringing the IP rights of others. Back to Top3. How can I secure my client's ownership of rights to IP created by their employees?In general, copyright rights in employee's creations automatically are owned by the business. Patent rights require an agreement or special circumstances to transfer ownership from the employee to the business. Back to Top4. How can I secure my client's ownership of rights to IP created by their contractors?In general, copyright rights in a contractor's creations are owned by the contractor unless a written agreement specifies that the business owns them. Patent rights also require an agreement for ownership transfer. Back to Top5. What IP considerations apply in a typical business incorporation ?The client should select a name (corporate/legal name and/or trade name) that is suggestive (as opposed to descriptive) of its goods and services. In addition to the search of corporate names at the state level, a trademark search should be conducted, preferably including the federal records at the US Patent and Trademark Office (USPTO) and the records of the relevant state trademark office, to verify that the name is not confusingly similar to a corporate name (legal name), trade name, or mark of another company. The name typically should be treated as a trade trademark or service mark, and consideration should be given to trademark registration at the state or federal level (or recordation at the county level in the case of a trade name). Back to Top6. What IP considerations apply in a typical business acquisition (transfer) ?The client should perform a due diligence inventory of of IP prior to purchase. The inventory should include potential offensive rights and defensive responsibilities. To the extent possible, known IP should be valued. Warranties and indemnifications should be considered. IP should be specifically referenced in transfer documentation. Transfers of trademark rights should specifically include goodwill associated with the marks in transfer documentation. Back to Top7. Is insurance available pertaining to IP?Yes, special insurance is available for IP infringement defense and IP infringement enforcement (offense). Additionally, some existing business insurance policies cover some patent, trademark and copyright infringement under "advertising injury" provisions. Back to Top8. What is the status of revenue generated from IP transfers?In general, in a sale (assignment) of a patent, the proceeds from the sale are treated as a capital gain to the seller (assignor) while the cost of the patent is amortized over time to the buyer (assignee). In a license of a patent, royalty payments are treated as ordinary income to the licensor and an expense to the licensee. Back to Top9. Is representation available on a contingency basis for enforcement or defense of my client's IP rights?Some IP litigators will take cases on a contingency basis. However, contingency cases are rare. Back to Top10. Can general practice attorneys represent clients in IP matters?The US Patent and Trademark Office (USPTO) requires special registration of persons practicing before it in patent matters. Attorneys may represent client's in trademark matters before the USPTO. Of course, attorneys may represent client's in IP valuation, transfer and infringement matters outside the USPTO. Back to TopHome | About Us | Members | Practice Areas | Careers | Contact Us | Links
|