The following article appears in the journal JOM,
52 (8) (2000), p. 56.

JOM is a publication of The Minerals, Metals & Materials Society

The Importance of an Intellectual Property Audit

Alan B. Silverman

Many businesses deal with intellectual property matters on an isolated case-by-case basis without having effective procedures custom-tailored to their particular needs. This can be very dangerous. It is a relatively simple matter to have an intellectual property specialist determine what forms and procedures should be adopted after discussions with appropriate individuals within the clientís organization. This serves to minimize the risks of infringement on the rights of another and forfeiture of intellectual property rights, as well as to maximize protection for intellectual property.

In patents, it is important that management and technical personnel be aware that public disclosures or public use can forfeit foreign patent rights in all major countries if such actions occur before the effective filing date of a patent application. Also, in the United States, publication, commercial use, and placing-on-sale results in forfeiture of the right to seek patents one year after the initiation of such action.

Having invention disclosure forms, which elicit detailed information regarding the nature of the invention and whether any forfeiture-risking activities have been engaged in or are contemplated, can be of great value. Keeping research and development notebooks and recording technical work in a dated witnessed fashion can be important in disputes with others regarding an invention and the right to obtain a patent.

Before adopting trademarks, it is important that a screening search be performed to verify that the mark does not infringe anotherís prior rights and to confirm the mark is available for registration. Guidance regarding technical trademark use, including creating proper specimens bearing proper legends, is also important.

Copyright has increased in importance in recent years, partly due to the commercial importance of software. Appropriate guidance must be provided regarding work that should be considered for copyright; copyright marking, which is no longer required, but is desirable; and such concepts as a work-for-hire vesting ownership of the work in the employer.

It is critical that employees be educated about what information is maintained as a trade secret. Appropriate security procedures must be established and followed. It is also important to have confidentiality agreements governing the disclosure of confidential information to outsiders, as well as receipt of information from others. The subject matter governed by the agreement, the exceptions to confidentiality, restrictions on disclosure and use, negating a grant of an implied license, and the term of the agreement should be specified.

Technical and management people, as well as certain staff, should sign an employment agreement at the time of hiring. The agreement should impose confidentiality with respect to trade secrets obtained or generated by the individual during employment, as well as obligations to disclose inventions, cooperation with the patent evaluation and protection efforts, and assignment of ownership to the employer. If such agreements were not executed prior to employment, creating agreements with present employees should be evaluated.

It is also desirable to have an exit-interview procedure. During such an interview, an employee who is leaving the business should be reminded of his or her obligations with respect to the companyís intellectual property and should be asked to sign a document reaffirming the obligations. If an employment agreement was signed, this should be attached as an exhibit. A copy of the signed exit-interview form, including the employment agreement, should be given to the employee, and one should be retained by the employer. Such an interview not only serves as a meaningful reminder to honorable individuals, but also can be valuable evidence in the event that a former employee departs from his or her obligations.

Procedures should be established for reviewing proposed promotional materials for patent marking, trademark marking, copyright notices, comparative advertising that mentions competitors or their products, and representations regarding the companyís own products.

Establishing intellectual property procedures and appropriate related educational materials and forms are of no value unless the systems are adhered to on a day-to-day basis. It is desirable to appoint an individual to be responsible for coordinating such activities, including internal administration, dealing with third parties, and interfacing with outside counsel. This enhances the likelihood of efficient administration of the program and avoids a duplication of effort or a miscommunication in which someone fails to take action because of the assumption that someone else is taking care of the matter.

While attorneys generally maintain tickler systems and provide clients with reminders regarding deadlines (such as foreign patent maintenance fees and trademark declarations of use and renewals), it is desirable for the client to maintain records as well. In addition to facilitating efficient management of an intellectual property estate, this information can serve as a valuable management tool. Record-retention procedures and terms should be established so that information that may be of critical value is not discarded. These procedures should include guidelines for storage of active files, storage of inactive files, and a tickler system determining when certain files will be destroyed.

In summary, an intellectual property audit can be a relatively simple matter that can have a meaningful role in avoiding the violation of othersí rights, protecting oneís intellectual property rights, minimizing the risk of forfeiture of rights, clarifying ownership issues, and educating employees. It also serves to provide guidance to and preservation of rights against former employees. In addition, it enhances the likelihood of obtaining a desired result, promptly and without the expense of prolonged legal proceedings.

Arnold B. Silverman is chair of the Intellectual Property Department and a member of Eckert Seamans Cherin & Mellott, LLC in Pittsburgh, Pennsylvania.

For more information, contact A.B. Silverman at Eckert Seamans Cherin & Mellott LLC, 600 Grant Street, 44th Floor, Pittsburgh, Pennsylvania 15219; (412) 566-2077; fax (412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.

Copyright © 2000 by The Minerals, Metals & Materials Society.

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