Protecting Intellectual Capital

July 15, 2005
Establish an on-going dialog with legal counsel.

Strategic initiatives such as nanotechnology heighten the need for intellectual property safeguards, advises attorney Alan J. Ross, a partner in the Cleveland office of Bricker & Eckler LLP.

He recommends periodic reviews of operating procedures and policies as well as establishing an on-going dialog with appropriate legal counsel.

To facilitate initiating that dialog, Ross offers the following list as preparation:

Designate an oversight team to handle electronic records management that includes business, legal, and IT staff. Electronic records have become a major problem for business from both compliance and litigation discovery standpoints. The law is clear that record retention policies must be enforced and routine destruction of relevant records must cease once a company learns of a claim. Failure to follow proper procedures may completely undermine a company' s litigation position. New federal civil procedure rules governing electronic records will heighten the problem.

Apply sensible metrics to intellectual property decisions. Increasingly, businesses are required to value their intangible assets and justify their acquisition and maintenance costs. Sarbanes Oxley effectively mandates this for public companies. A team from R&D, marketing and legal should develop business-based metrics for your company's IP program. You need to know to what extent a market is protected by patent or trademark.

Require blanket IP assignments from employees and develop post-employment strategies. You must be able to claim exclusive ownership of IP assets developed by your employees. Get assignments in writing before employment begins. In an exit interview get an acknowledgement that the employee is not leaving with company assets and will not be disclosing company trade secrets. Then confirm everything in writing to the employee with a copy to his new employer.

Update electronic use policies periodically and enforce compliance. Technology evolves rapidly. Stale electronic use policies will eventually present ambiguities or vulnerabilities. Company policies should be updated periodically and require that PDAs and electronic files taken off site be password-protected or encrypted.

Leverage technology to bolster IP protection and increase productivity. Most employees are unaware that the identity and nature of the sites they visit, how long they remain online, and sensitive information in search terms are routinely captured. You may realize productivity gains by periodically reminding employees of this practice. You also should consider programs or services that quarantine communications referencing words associated with proprietary information and communications to a competitor's Internet domain.

Monitor employee blogs. Current estimates suggest that there are 2.5 million blog sites in the United States, and 10,000 are coming online every day. While company-sponsored blogs may be an asset, employee blogs represent a potential source of competitive intelligence and a place where dirty laundry may be publicly aired. You clearly have a right to protect yourself from disclosure of proprietary information and should monitor blogs for references to your organization and react to inappropriate postings.

Monitor competitors' patent developments. Under current law, knowledge of a competitor's patents can be problematic. But Congress is moving quickly to change that with a package of patent reforms that likely will include universal publishing of patent applications after 18 months and post-grant opposition procedures. You should begin monitoring your competitors' patent activities. Advance knowledge can forewarn of a competitor's R&D direction, potential patent coverage that might intersect with your own developments, and potentially weak patents that should be challenged before they are issued.

Make privacy a top priority. Although several federal privacy acts like HIPAA, GLB and COPPA protect specific, limited categories of information, privacy issues are currently governed by a patchwork of state regulations that are rapidly evolving as identity-theft crimes explode. Compliance with one state's laws does not guarantee compliance will all. You should periodically reevaluate the privacy requirements of each state in which you do business or every state if you sell via the Internet and should comply with the most stringent regulations.

Employ confidentiality agreements when outsourcing. The risk of exposing trade secret information to non-employees increases exponentially with outsourcing. Every outside organization performing work for your business should execute a non-disclosure agreement. They demonstrate your company's dedication to preserving its proprietary information, which is essential in trade secret misappropriation litigation, and they make the outsider more cognizant of confidential information.

Monitor trademark usage on the Internet. Today's technologically-savvy users often copy companies' marks and paste them onto their own Internet sites. While such use is often inoffensive, courts routinely hold that to maintain trademarks, the owner must police them and ferret out inappropriate uses of its marks.

Prohibit mobile phones with cameras in sensitive areas. Mobile phones with built-in cameras have become the bane of trade secret protection. A picture continues to be worth a thousand words, and perhaps more, if it shows your newest development before it' s been released to the public.

Require employees to encrypt their home wireless networks. In the computer age, e-employees often take their work home. With the proliferation of wireless home networks, it is essential that you require your employees to activate their router's encryption to exclude outsiders from the network.

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