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What Steps Can an Employer Take to Protect Its Intellectual Property?

By Roger Hood, Partner, Duffy, Sweeney & Scott, rhood@duffysweeney.com

In the next few issues of The MAC Action Newsline we will present steps that an employer can take to protect its intellectual property. Intellectual property covers a vast area, so a few basic points are required before we start.

Terminology of Intellectual Property
Intellectual property typically cover ideas, inventions, literary creations, unique names (e.g. brands), business models, industrial processes, computer program code, publicity rights, trade secrets, and unfair competition. It is organized into four broad areas of the law: copyrights, patents, trademarks, and trade secrets. 

A copyright is a right granted to the author or originator of certain literary or artistic productions where, for a limited period (most copyrights run from creation until 70 years after the author's death), he or she is given sole and exclusive privilege of copying, publishing, and selling them. Copyright protection is afforded in original works of authorship in software, design, graphics, literary works, musical works and accompanying words, dramatic works, pantomimes and choreographed work, pictorial and sculptural works, motion pictures, and sound recordings, among others.

A patent is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office or its other country counterpart.  It is, in effect, a legal monopoly.  The term of a new patent is usually 20 years from the date on which the application for the patent is filed.  If the patent issues, the right of a patent is the right to exclude others from making, using, offering for sale, or selling the invention in the United States and/or other countries where the application has been granted.

A trademark consists of any word, name, symbol, or device, or any combination used by a person to identify and distinguish his or her goods from those manufactured or sold by others.  Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark.

A trade secret is any information that allows a person to make money because it is not generally known. A trade secret could be a formula, computer program, process, method, device, technique, pricing information, customer lists, or other non-public information. If the economic value of a piece of information relies on it being kept private, it could be a trade secret if certain safeguards are established and maintained.

In our article on copyright, we will review how to protect copyrighted material under common law and by registration.  We will also discuss protections that an employer can undertake with employees, contractors, consultants, and developers through work for hire agreements as well as in product quotations and distribution.

In our patent article, we will discuss the difference between design and utility patents, patentability considerations, the benefits of patents (including licensing and enforcement), and the interplay between patents, trade secrets, and copyrights.

In our trademark article, we will discuss good practices to undertake before using or adopting a trademark, as well as methods to enhance the value of and to protect your trademark once it is established. 

In our trade secrets article, we will offer guidelines for employers to use in protecting trade secrets. These steps include review of confidentiality measures through non-disclosure agreements with employees and others, and also include measures to include in employment agreements and employee handbooks.

Roger Hood is a partner with the firm Duffy, Sweeney & Scott, Providence Rhode Island and specializes in intellectual property. He can be contacted at rhood@duffysweeney.com

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