Association of Corporate Counsel

Patents, Trademarks, Copyrights and Trade Secrets: An Introduction To Intellectual Property For In-House Counsel

Updated May 2005

Provided by the Association of Corporate Counsel
1025 Connecticut Avenue, Suite 200
Washington, D.C. 20036
Tel 202.293.4103
Fax 202.293.4107
www.acca.com

This InfoPAKSM is designed to provide corporate counsel a general overview of intellectual property and to suggest useful practices for the handling of intellectual property issues in the corporate setting. This information should not be construed as legal advice or legal opinion on specific facts, or representative of the views of ACC or any of its lawyers, unless so stated. This is not intended as a definitive statement on the subject but a tool, providing practical information for the reader. We hope that you find this material useful. Thank you for contacting the Association of Corporate Counsel.

This material was compiled by The IP Attorneys Of Dickstein, Shapiro, Morin & Oshinsky at the direction of the Association of Corporate Counsel.

ACC wishes to thank the following members for their contribution the development of this InfoPAKSM:

J. Gregory Bishop, General Counsel, Murex S.A.
&
Alexandre Montagu, General Counsel, Lipper, Inc.

Full Downloadable Version, PDF Format.

Table Of Contents

  1. Kinds of Intellectual Property Protection
    1. Introduction
    2. Patents
    3. Trademarks
    4. Copyrights
    5. Trade Secrets
    6. Auditing Your Company's Existing IP Rights.

  2. International Intellectual Property Rights Considerations
    1. Introduction
    2. Foreign Patent Rights
      1. Patent Applications under the Paris Convention
      2. Patent Applications under the Patent Cooperation Treaty
      3. Patent Applications under European Patent Convention
      4. The European Community Patent
      5. When to File Foreign Patent Applications
      6. Preserving Patent Rights
        1. Patent notices
        2. Maintenance Fees
        3. Enforcement
        4. Compulsory Licensing
    3. Foreign Trademark Rights
      1. National Trademark Registrations
      2. International Registrations
      3. European Community Trademark Registrations
    4. Strategic Considerations
    5. Cost considerations

  3. Cost Analysis Of IP Protection Program
    1. Internal Costs
    2. External Costs
    3. IP Enforcement Costs
    4. Tracking and Controlling IP Costs

  4. The Benefits of an IP Protection Program

  5. Corporate Utilization of Internal vs. External Legal Resources
    1. Pros and Cons of Doing IP Work In-House Versus Working With Outside Law Firms
      1. Reasons for Retaining Outside Counsel
      2. Reasons for Not Utilizing Outside Counsel
    2. Criteria for Deciding When to Engage in Outsourcing of IP Legal Services vs. Utilizing Internal IP Resources
      1. IP and General Counsel on Staff
      2. When There is No Staff General Counsel
      3. When There is No Staff IP Counsel
      4. When All Legal Work is Done By Outside Counsel
    3. Criteria for Selecting Outside IP Counsel
      1. Domestic Law Firms
        1. Pre-screen the Candidates
        2. Ask Questions
        3. Be Candid with Candidates
        4. Look For Loyalty
        5. Go with One's Instinct
      2. Foreign Law Firms
      3. Settlement Counsel
    4. Achieving Quality Assurance in Working With Outside Law Firms
    5. Controlling the Costs of Utilizing Outside IP Counsel, Budgets
      1. Budgets
      2. Hourly Rate Billing
      3. Transactional Billing
      4. Fixed Fee Rates
      5. Retainers
      6. Value Billing
        1. Contingent Fee Arrangements
          1. In IP Litigation
          2. In IP Prosecution
        2. Offering Equity Ownership in the Company to Outside Law Firms in Exchange for Services Rendered

  6. Creating a Corporate IP Protection Plan From a Legal and Business Perspective
    1. Identifying Internal Company Resources for Setting Up an IP Protection Plan
      1. Where IP Work Is Performed
        1. Factors Affecting Location of IP House Counsel
        2. Location Within the Legal Department
        3. Centered in the Research or Engineering Department
        4. Reporting to Senior Management
          1. Liaison with Other Departments
          2. Advantages of Supervision by Management
      2. Organization and Allocation of Responsibilities Within an IP Department
        1. Reasons for Staff Centralization
        2. Staff Specialization
        3. Size of Department
    2. Key Personnel for Achieving "Critical Mass" Within an IP Department
      1. Assignment of IP Functions
        1. Duties of Chief IP Counsel
        2. Participants in Foreign IP Procurement
        3. Participants in Trademark Protection
        4. Participants in IP Licensing
        5. Participants in IP Interferences and Litigation
      2. IP Committees
        1. Membership
        2. Activities
    3. Internal Marketing of Corporate IP Legal Services
      1. Awards to Employee Inventors
        1. Cash Awards
        2. Fixed Awards
        3. Variable Awards
        4. Payments for Patents or Licenses Sold
        5. Compensation of Nontechnical Employees
        6. Alternatives to Cash Awards
      2. Keep Senior Executives Informed
      3. Keep Technical Personnel Informed
        1. Official Gazette
        2. Patent Information Booklets
        3. Liaison with Inventors

  7. Trade Secrets
    1. A Case Study Introduction
    2. Definition of Trade Secrets
      1. Subject Matter
      2. Economic Value
      3. Not Generally Known or Readily Ascertainable
      4. Subject to Reasonable Secrecy Measures
    3. Why Use Trade Secret Protection?
    4. Misappropriation of Trade Secrets
      1. Definition of Misappropriation
      2. Remedies for Misappropriation
    5. Protecting Your Trade Secrets
      1. Reasonable Secrecy Measures
      2. Coping with the Internet
    6. Practical Necessities for Trade Secret Protection
      1. Non-Disclosure/Confidentiality Agreements
      2. Exit Interview Checklist
      3. Post-Departure Investigation
      4. E-mail Policy
      5. Clean Desk Policy

  8. Trademarks
    1. What Is a Trademark? What Is a Service Mark?
    2. Selection and Approval of Trademarks
      1. Coined Marks
      2. Arbitrary Marks
      3. Suggestive Marks
      4. Descriptive Marks
      5. Generic Terms
      6. Narrowing the Field of Potential Trademarks
      7. Searching to Avoid Infringement
      8. Searching Basics
      9. Availability Options
      10. Dealing with Problems
    3. Registration of Trademarks
      1. Maintaining a Trademark Registration
    4. Role of the In-House Legal Department
      1. Performing an Initial Audit to Establish a Baseline
    5. Proper Trademark Use
      1. Use of Trademark Symbols ® and TM
      2. Legal Department Review
    6. Protecting Against Infringers
    7. International Trademarks
      1. International Searching
      2. International Registration
      3. Non-Use in Foreign Countries

  9. Copyrights
    1. Introduction
    2. Protectable Subject Matter
    3. What Is Not Protectable
    4. Authorship
    5. Formalities
    6. Exclusive rights
    7. International Rights
    8. Transfer
    9. Cost of Protection
    10. Enforcement
    11. Computer Software

  10. Patents
    1. Introduction
    2. Policies and Procedures for Protection of Company Patent Rights
      1. Employment Agreements
      2. Third Party Agreements
      3. Prior Review of Company Publications
      4. Invention Reporting
      5. R&D and Product Development Records
      6. New Product Review
      7. Determining Whether to Apply for a Patent
      8. Relation of the Invention to the Company Business
      9. Competitive Advantage
      10. Defensive Benefit
      11. Technology Transfer
      12. Determining the Scope of Patentability
      13. Preparing a Patent Application
      14. Costs
      15. Timing
      16. Other Considerations in Filing Patent Applications
    3. Patent Committees
    4. Instituting a New Patent Program — A Phased Approach
    5. Patent Training For Employees
    6. Avoiding Infringement of Third Party Patent Rights
      1. State of the Art Study
      2. Infringement Study
      3. Designing Around Patents
      4. Validity Study
      5. Licensing
      6. Monitoring Competitors for Infringement of the Company's Patent Rights

  11. Coverage for IP-Related Risks
    1. Introduction
    2. Relevant CGL Policy Provisions
      1. Media Liability and Errors and Omissions Policies
      2. Patent Insurance Policies
      3. Insurance for Plaintiff's IP Litigation Costs
      4. IP Defense-Cost Only Insurance
    3. The Importance of Internal IP-Related Controls

  12. Timeline 92
    1. Formulating a Realistic Schedule for Organizing and Implementing a Corporate IP Protection Program
      1. Identifying the IP Services Required
      2. Recruitment and Staffing Policies
      3. Support Services/Docketing
    2. Monthly Checklists of Actions to be Taken
      1. Identifying the "Milestones"; Setting Action Priorities
      2. Allocating Time Frames
  13. Additional Resources

  14. Sample Forms and Policies

  15. Appendix

  16. About the Firm
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© Copyright 2005 Association of Corporate Counsel. All rights reserved.