In almost any business, there is at least one form of intellectual property (IP) that requires protection. Whether they have trademarks, patents, copyrights, trade secrets, or a combination of these, protecting this IP is vital to the business’s identity and reputation. Whether you have just started your business and want to protect your intellectual property rights or have been in business for years and need assistance with portfolio management or enforcing your rights, one of our experienced IP attorneys may be able to assist you. Call Sullivan & Carter, LLP at (929) 724-7529 to schedule a consultation with a Chicago IP attorney to learn more about your legal rights.
One of the first steps to protecting intellectual property rights is the appropriate registration of the IP. In most cases, the individual or business creating the intellectual property has rights immediately upon creation. However, those rights can often only be enforced when the IP has been properly registered. This serves as evidence that the individual or business is the owner of such property, particularly when someone else has come up with the same or a very similar piece of IP.
An IP attorney may be able to assist with registering a trademark with the United States Patent and Trademark Office (USPTO). A skilled attorney will search existing trademarks to confirm that the trademark to be registered does not infringe. They can also fill out the application and respond to office actions that the USPTO may send. The attorney can also file the appropriate maintenance documents when they are due.
When an individual or business develops a new invention, an intellectual property attorney may be able to assist them with a patentability analysis and prepare and file the application. In the event the patent application is denied, the attorney can also file an appeal. Additionally, an attorney can counsel the individual or business and assist in managing strategic portfolios, focusing on providing strong and enforceable patent protections.
Copyright registration applies to things such as music, books, films, paintings, computer programs, video games, sound recordings, and other original works of authorship once they are put in tangible form. While the creator owns copyright as soon as the work is put in tangible form, they can only enforce their rights after the copyright has been registered with the United States Copyright Office. An attorney may be able to assist with filing the copyright application as well as enforcing the copyright owner’s rights when they are infringed on.
Trade secrets are a unique form of intellectual property in that they do not get registered. In fact, the only way to protect trade secrets is to limit access. A knowledgeable IP attorney may be able to provide guidance and information on how to ensure a business’s trade secrets remain protected, including where and how to store the information, and the use of non-disclosure or confidentiality agreements with employees or vendors.
Once the individual or business has registered their intellectual property, they must monitor for infringement in order to protect their rights. An IP attorney may be able to assist with monitoring trademarks, patents, and copyrights for infringement. Additionally, if an individual or business’s intellectual property rights are infringed on, the attorney may be able to assist with enforcing their rights by sending cease and desist letters as a first step. Additional steps an attorney may be able to take include requesting injunctions, or court orders that prohibit the alleged infringer from engaging in any infringing activities, and litigating for damages if a cease and desist letter is not effective.
A skilled IP attorney may also assist in portfolio management. While some individuals or businesses may only have one piece of IP, many have several. This results in an IP portfolio that identifies and protects all the individual or business’s IP. This portfolio is managed in alignment with the individual or business’s strategic objectives and typically contains an active register that allows both the attorney and the individual or business to keep track of all the IP in the portfolio.
An IP portfolio begins with the creation of the IP it contains. An IP attorney may assist with inventorying, assembling, and auditing the individual or business’s patents, trademarks, copyrights and trade secrets to ensure that they have all the details. This may also include any IP that the individual or business has licensed from others.
Many businesses do not use just their own IP. They often require intellectual property from other individuals or businesses. In these instances, they will acquire the IP through various methods, including purchasing, licensing, or other assignments or agreements. An attorney can assist with finding the necessary IP and learning how their client can acquire it. They can also assist with maintaining the company’s acquired IP, such as paying licensing fees or royalties and renewing contracts.
Intellectual property is often used throughout the company. This means there are likely employees who use the IP without knowing whether it belongs to the company they work for or another company that has licensed it to their employer. An IP attorney can ensure everyone’s intellectual property rights are protected by creating a cohesive knowledge management tool that easily communicates the company’s IP needs, including information regarding who owns the IP, the terms and conditions under which the IP may be used, and what information may or may not be shared about the IP.
As companies grow and expand, they often need or want to acquire more IP. A Chicago IP attorney with Sullivan & Carter, LLP may be able to assist with identifying opportunities to acquire IP that their client would find useful, as well as identifying IP the client may want to acquire to avoid competition in the future. They will consider factors such as how novel the IP is, how the IP may strengthen their client’s IP portfolio, whether there are other more attractive or viable targets, and which options may exist for their client if a competitor acquired the IP instead. The attorney can also determine whether the client should acquire the IP through licensing, purchasing, joint business ventures, or other arrangements.
Protecting intellectual property rights requires staying on top of existing IP as well as new and developing IP. An attorney can assist their client by designing and implementing portfolio management procedures such as invention recordkeeping, patent incentive programs, and intercompany invention reporting. This will help the company remain aware of new inventions within the company that they may want to add to their portfolio with a streamlined process rather than attempting to handle them on a case-by-case basis.
Intellectual property is proprietary information. While all IP should be protected, trade secrets are particularly vulnerable. An IP attorney can assist their client in protecting their intellectual property rights by developing and implementing proprietary information protection programs. These programs might include confidentiality and non-disclosure agreements for employees, vendors, and others who need access to trade secrets, as well as limiting access to trade secrets. The programs may also include specific labeling of proprietary information, security measures such as locked safes or air-gapped computers, and exit interviews to collect all documents, computers, keys, and other ways of accessing proprietary information.
Due diligence is an important start to any negotiations to purchase, license, or sell intellectual property for both parties to the deal. Due diligence allows both parties to define, examine, and analyze the IP portfolios they are considering buying from or selling or licensing to. The target company and the buyer both have the opportunity to evaluate and determine the value of the IP involved by examining the scope, strength, and enforceability of the IP, ensuring clarity around the ownership of the IP, and what future potential may be derived from the IP.
Many times, IP attorneys are not brought in for due diligence until the terms of the deal are set. Then, due diligence must be done as quickly as possible, often a matter of days or just a few weeks, and this can lead to unrealistic values of the IP or problems with the transaction that cannot be quickly resolved. A skilled IP attorney will recommend doing due diligence at the beginning of the transaction to allow for comprehensive risk assessments, thorough evaluations, and time to seek resolutions to any issues that arise.
In addition to identifying opportunities to acquire IP from others, IP attorneys can also assist with leveraging and monetizing a client’s existing IP. This may include licensing the IP for others to use, selling products that use the IP, selling the IP to another individual or business, or creating content about the IP. In some cases, individuals or businesses may use the IP as collateral to secure loans or other financing.
An attorney can assist clients with protecting intellectual property rights by drawing up contracts for licensing, assignments, and other agreements related to the sale or licensing of their IP. They may also facilitate obtaining licenses from others or assist with assigning the rights to a portfolio in part or in full. They can also identify breaches of contract and review and interpret contracts.
Additionally, an IP attorney can enforce agreements and handle issues related to the compliance, renewal or termination of agreements. They can identify and resolve licensee conflicts. They can assist with IP assignments, employment and work-for-hire agreements related to IP. IP attorneys can also create and enforce non-compete agreements, confidentiality and non-disclosure agreements, and manufacturing and distribution agreements.
While litigation is not ideal, it can result in a company gaining strength and recognition and protecting the brand. IP attorneys can assist with protecting intellectual property rights with specialized infringement and anti-counterfeiting initiatives that prevent unauthorized use of the IP to reduce the chances of needing to file or defend against lawsuits.
In the event that the worst happens, an IP attorney can assist with litigation for unauthorized use of IP, counterfeit products being sold using the client’s name, competitors encroaching on or using deceptively similar IP, unauthorized registration of a domain name using the client’s trademarks, and unauthorized use of a person’s name, image, or likeness for whom the client holds the rights. They can collect the evidence needed to prove that their client owns the IP in question, and in some cases, may even be able to negotiate a settlement without litigation with the other party.
IP attorneys can also provide consulting services. These services can help a client identify gaps in their registration and protection of IP, identify threats to the IP, and consider registration expansion. They can also assist with short and long term planning and management of IP, IP restructuring, and marketing strategies. Finally, consulting services can also provide a competitive analysis of the client’s IP, helping them understand their competitors’ strategies regarding technology and how the competitors position themselves in the market, as well as anticipate and respond to competitors’ actions.
In today’s global market, remaining relevant means staying informed about the ever-changing landscape of intellectual property law. While most businesses have IP, they do not have the time or ability to monitor IP law. At Sullivan & Carter, LLP, our team of Chicago IP attorneys works closely with our clients to ensure their technologies and ideas remain secure so they can focus on what they do best: growing their businesses. If you have questions about intellectual property rights or need an IP attorney to assist you, call (929) 724-7529 to schedule a consultation and learn more about our IP legal services.
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