By Neil A. Burstein

The licensing of intellectual property has become a multi-billion dollar industry. As a result, business owners and individuals are looking for ways to preserve and maximize the value of their ideas, inventions, artistic creations and other forms of intellectual property. In addition to creating lucrative licensing opportunities, intellectual property serves to protect company assets and prevent exploitation by others.

Knowledge about intellectual property rights has never been more important. An understanding of the fundamentals of copyrights, trademarks and patents is vital in today’s global market. Recognizing how such rights are created, owned, transferred and exploited will often determine the success or failure of a company. Many companies, however, fail to take the steps necessary to fully protect their valuable intellectual property assets.

Here are some tips and strategies to protect, maximize and enhance your intellectual property assets:

1. Register Your Trademarks with the U.S. Patent and Trademark Office

Most companies, regardless of the type of products or services they sell, have trademarks which should be protected on a nationwide basis. A trademark is a word, name or symbol which identifies the products or services of a company. A good trademark is a valuable asset which can be worth millions of dollars. The prudent company will not leave to chance the protection of its trademarks. Register important marks with the U.S. Patent and Trademark Office to obtain the strongest protection available by law.

2. Incorporation Does Not Protect Your Business Name

It is a common misconception among many business owners that trademark protection is obtained by incorporation or by filing of a partnership or assumed business name. Such business name filings, however, do not protect your business name as a trademark. Only federal registration of your trademark provides any assurance that you can use your name in the marketplace of interstate commerce.

3. Protect Your Creative Materials By Copyright

Almost all companies own rights in a variety of creative materials produced and used in their business. These materials may include software, promotional literature, pictorial, graphic and sculptural works, photographs, paintings, drawings, sculptures, architectural drawings, business plans and jewelry designs. Copyright law protects against the unauthorized copying, duplication, or distribution of creative works. Certain rights are obtained automatically upon the creation of the work. Registration, however, is strongly recommended to obtain the full spectrum of benefits which are only available through formal registration. One of the most important benefits obtained by copyright registration is the right to attorney fees and statutory damages in the event of infringement. Statutory damages are damages determined by the court in infringement cases, without reference to any actual damages, and can range from a minimum of $500 to as much as $100,000 (for willful infringement) for each work infringed.

4. Methods of Doing Business and New Technologies Are Patentable

Today savvy companies are looking internally for new procedures, methods of doing business or technologies which may qualify for patent protection. It is suggested that business owners should constantly evaluate whether any of their new ideas, methods or technologies can be patented. Companies should also be aware that patent rights can be lost forever by disclosing or publishing information to the trade or public without first taking the proper steps to protect their inventions.

5. Dealing with Contractors, Freelancers and Consultants

Dealing with contractors and freelancers can be a trap for the unwary business owner. Many entrepreneurs mistakenly believe that they own the results of a contractor or freelancer’s services upon payment of the agreed fee. Copyright law, however, provides that freelancers and independent contractors automatically retain the copyright to any original work they create absent a written agreement to the contrary. Therefore, business owners should make sure that contractors and freelancers sign written agreements which carefully spell out ownership rights and include “work for hire provisions”. Loosely drafted agreements can result in defective grants of ownership which can expose the company to costly copyright infringement claims.

6. Require Confidentiality Agreements For Freelancers and Contractors

Most companies have proprietary information and data used to keep their business competitive. Often, however, business owners do not take adequate precautions to restrict sensitive information from being misused. Entrepreneurs should be mindful to restrict the flow of confidential information whenever possible to avoid wrongful disclosure. Non-disclosure and confidentiality agreements should be routinely required by business owners for all persons having access to proprietary business information.

7. Intellectual Property and Your Employees

Copyright law provides that intellectual property created by employees within the scope of their employment is automatically owned by the employer. In employment disputes, however, employees often claim that certain intellectual property was created outside the scope of their employment. For example, the employee may claim that the work was created at night or outside the office during lunch break. To avoid such disputes, employment contracts should be reviewed to make sure ownership clauses are broadly drafted and provide that all works created are owned by the employer even if created outside of normal working hours.

Neil Burstein is an attorney practicing business and intellectual property law. He can be reached at 370 Lexington Avenue, Suite 505, New York, NY 10017. Phone: 212-545-9514; E-Mail:

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