Intellectual property rights audit - Exploring what you have (Part IV)

Breakdown of intellectual property audit

Intellectual property rights audits are divided into nine areas, including patents, contracts with independent contractors, employment contracts, trademarks, licenses, trade secrets, copyright, including organization handbooks, training, and acts. Each area has its own requirements and needs to be monitored through auditing.

The lawyer must first notify everyone who may be involved in the audit to be done. After that, interview the technology, law, administrative and personnel officials and collect information on "license, research and development report, confidentiality and transfer agreement of employees and contractors, and contracts for employee income disclosure". Based on the information thus obtained, she documents the state of the intellectual property of the organization.

invention

The invention is the first step in the development of potentially very valuable intellectual property. Lawyers conducting audits need to decide whether an organization is aware of all invention activities performed within its walls. Does the organization "harvest" it (ie, request disclosure and review the methods disclosed for patentability)? Is there an inventor's incentive program? Does the organization monitor its employees? Can in-house counselors "manage by serpentine", ie, walking through potential laboratory laboratories and other research, talking to others, can do ingenious activities in other ways? Lawyers who are conducting intellectual property audits should identify the weaknesses of the organization's "harvesting" acts and encourage management to watch at levels that can be dealt with.

Patent

Once the invention is disclosed, the organization needs to decide whether to acquire a patent and which country or country the patent is most valuable to the organization. In order to obtain patent protection, it is necessary for the organization to recognize the new innovation generated in the research and development process.
In the United States, the patent law is prescribed in Article 35 of the US law. The law stipulates that in order for an invention to be subject to patent protection, it must be originality, novelty and an unobvious patentable subject matter. "Patentable subject matter" is defined in the code as "process, machine, product, and composition".
Judge whether the R & D staff of the attorney's organization regularly and frequently reviews and keeps proper records of new developments witnessed, documentation of patent judgment and organizational statutory deadline of patent infringement investigation. For example, if an invention is published more than one year before the application of the organization of the patented invention, the organization will be unable to obtain a patent for the invention.

Lawyers will also review the handling of patent rights of others in the organization. Does your organization monitor yourself against other people? In order to reduce the possibility of violating the patent? Will the organization regularly find patent opinions if there is the possibility of infringing other patents before initiating a potentially infringing act?

General contract

Each agreement an organization enters into an intellectual capital must include a number of factors and some of each contract must be negotiated separately.

However, the contract is expressed in language, and in the case where the negotiation of the contract has little or no relevance to the contract negotiation, the words are inherently before the interpretation uncertainty. The drafter's job is to "record the transactions that the parties undertake accurately". However, the probability of achieving absolute rigor in drafting consensus is essentially zero. Can not do that. Definitions of terms in contracts always use undefined terms and undefined terms often can not be defined. Therefore, even in the best scenario where the contract includes all the definition of the terms, the parties still have to ask the judge to read the contract and interpret the judge's reading, the judge You can not do all the evidence surrounding the contract under the rules of evidence evidence. Therefore even accurate contracts are significantly inaccurate.
But even under the rules of evidence evidence,[a] Conflict [an] Suspicious conversation resolved by oral license [can not be offered into evidence under the parol evidence rule but] It may be resolved by partial evidence of fulfillment ... court, if there is no application of other complicated facts or fraud, from its partial fulfillment, scope of license, ... considerations , And duration .... "
Audit attorneys should investigate license agreements and strategic alliances between clients and other organizations to ensure that the contract covers the client's trade secret, licenses any trademark or patent, and benefits the client You can check at least not the disadvantage of the client).

Employment contract

Independent Contractor

By definition, independent contractors cause conflicts to protect the organization's intellectual assets. Independent contractors are generally specialists in specific fields and sell expertise to many organizations. If one (or more) of these organizations has intellectual capital in an independent contractor's offering, the contractor may use the same intellectual capital for other organizations, particularly for highly competitive organizations Should not be provided. However, the expert still needs to make a living, she is doing it by marketing expertise.
This dispute is made for a person who has a clear contract with an independent contractor from outside the business contract, possesses expert work products, and who owns memos and ideas of the contractor .

One way to resolve conflicts is for subscribers and organizations to agree on the store for the organization that the subscriber owns intellectual capital but the organization has a royalty-free license during the lifetime of the information Get it. This is because contractors can not hold information developed as trade secrets because they can freely market information to other organizations that a contractor may have contracted with, We can not transfer patented inventions as well), we can not properly commercialize products deriving from that information.

Another way to solve the conflict is to give the organization full ownership of the intellectual capital developed by the contractor to the "turn the coin inside out", but the contractor has all the contracts he developed for the organization You can access non-trade secret information of. While this is good for the organization, it may reject part or all of the specialty area for the contractor to sell to other potential customers.

There are many ways to solve this appropriate conflict between an organization and an independent contractor. Royalties for granting access to information, access to information, grant backs, contracts that change over time, sublicenses, allocations, and usage licenses are all individually or in combination, mutually satisfactory mutual agreement You can use it to reach.

Clearly, each contract with each independent contractor needs to be negotiated individually. The contract is based on the needs of each party at the time and at the moment and these needs will change with the parties and over time.

employee

Contracts with employees in the organization are routinely used to protect the organization's intellectual property assets. They usually cover corporate secrets, inventions, and writers' organizations, and generally sign both the entrance to the organization of the employee and the exit from the organization.
Employment contracts are part of the organization's intellectual property. We stipulate the protection of the organization's intellectual property both during and after the employee's service period. Each organization should carefully ask each employee in an interview interview as to whether or not each organization has expressed a nonpublic agreement with the former employer who was in violation of the current organization's employment contract. If she does so, the current employer needs to change the contract of the employee so that it does not violate the original contract.

Some employment contracts include copyrights of all trade secrets, inventions and works, regardless of the employment of the employee. Others cover only those specially made for the organization employed there. There are also works that employees made for the organization or cover works directly or indirectly competing with the goals of the organization.

The end of the above example may be the most commonly used paradigm. The first one (all trade secret inventions and authors' work while being hired) is too wide. For example, this type of agreement is a valuable HARRY POTTER (TM) franchise when the author signed it, regardless of whether the employee gave something (time, equipment, artistic support, etc.) There was a possibility that he gave the employer. . ). Of course, this was not a fair result of employees, leading to employer's wealth at the cost of employees. The second thing (only works created for organizations employed in the organization) is not large enough to adequately protect the organization. Employees who must protect only the intellectual property of the organization while employed by the organization will leave the intellectual property developed for the employer, perhaps an organization for the competitors, free to leave can. The last example (the work created for the organization and the work that competes with the organization's goal) usually avoids assigning valuable work to the employer, although it is non-compilation outside the employee's business hours, Protect secrets and other intellectual property Organization's capital Before then it is most likely to be advantageous for both employers and employees.

Audit of intellectual property rights can guarantee that appropriate protection of the organization's intellectual property will be made under employment contracts and independent contractor contracts. At that time, attorneys will verify that these contracts are over or under contract. If the employment contract or the independent contractor agreement is too broad or too narrow, the attorney may recommend changing the contract and may provide a means for the organization or employee who signed the insufficient contract. Brought under a new, more appropriate agreement umbrella.
The audit firm needs to examine the contracts of both independent contractors and employees to ensure that appropriate protection is being carried out. Trade secrets must not be disclosed to others without permission, patents and copyrights are assigned to organizations,

trademark

The organization must record each assignment of the trademark to the US Patent and Trademark Office (USPTO) in the language including goodwill as well as the trademark attached to the assignment. Lawyers who are conducting intellectual property audits can make sure that appropriate assignments are made for each mark and recorded reliably.
Organization may lose trademark or service mark rights by abandoning the mark or by not submitting the appropriate document to the USPTO in a timely manner. Audit attorneys need to confirm that the organization has submitted the necessary registration and maintenance documents to the USPTO and that the mark was continuously used in interstate transactions.

Organizations may lose trademarks or service mark rights due to improper licenses or inappropriate policing. If the mark becomes a general descriptor of the item due to incorrect policing, the mark is lost. "Escalator" and "Cellophane" are two examples of marks lost to the owner in general. There are more marks left, but examples of threatened marks are Kleenex® (frequency of taking "kleenex" from a box of another brand's brand) and Xerox® (so far you ' Do you have xeroxed? Audit attorneys need to ensure that the risk of becoming generic drugs is resolved quickly and violently Xerox Corp. and Kimberly-Clark (Xerox brand copy machines and Kleenex brands, respectively Manufacturers) spend millions of dollars each year to protect the mark.

The current registration must cover the organization's current trademarks, logos, logos, and brands. By examining the packaging of the item, the attorney can determine whether the mark currently being registered matches the mark currently being used. Lawyers need to divert the client's attention.

license

Licensing intellectual property is one of the most efficient ways to utilize intellectual assets. This means that intellectual assets must be adequately protected by the license agreement. The full scope of the license agreement is outside the scope of this work. It is a complicated contract to negotiate on an individual basis.

Intellectual property lawyers need to make the following decisions regarding license agreement.

Is this an explicit license? License may be made explicitly or implicitly. Explicit licensing is what Licensee says that Licensee has the right to use Intellectual Property owned by Licensor. If that statement is written down and signed by both parties, that writing provides strong evidence of the existence of the contract. An implicit license may arise from one of many situations. In some cases it may be imposed by the court based on the acts of the parties, the parties may create an implied license without proceeding by continuing to act as if the license exists. Intellectual Property Lawyers interview research personnel to find implicit licenses by checking whether they are using technology from sources other than within the organization and by tracking ownership of the intellectual property they use can do. Attorneys can also find implied licenses by a court ruling in litigation involving the technology in question.
Is there writing? As with all contracts, writing is absolutely not necessary for effective mandatory negotiations. In today's knowledge-driven economy, of course, most contracts are reduced to writing and signature, but verbal contracts can be as binding as written contracts. Clearly, writing lawyers, including intellectual property audits, have contract terms in front of her on the printed page, so writing is much preferable in contractual situations involving audits of intellectual property.
Is the license exclusive? Are organizations subject to intellectual property rights audited by licensor or licensee? Licenses can be exclusive (sometimes even to condemn the intellectual property owner's right to use the property) or non-exclusive. An exclusive license, if for any reason it turns out that the license is unsatisfactory, you need to be careful to keep the open viewing the future.
Do each license include permission phrases? Each license must contain a permission clause that specifies the scope of the license and the license of the licensee's license.
Does the owner of the real estate reserve certain rights? An intellectual property owner can choose to retain or maintain some property rights (this is a non-exclusive license grant).
Does the licensing agreement include the person in charge of technical improvement? License must identify what Licensee made in the licensed technology.
Does the license prescribe royalties, payment schedules and accompanying reports? For licenses, you must specify all royalties and payment schedules, and accompanying reports.
Does the license agreement include standard contract provisions? The license agreement includes the terms of the contract, the termination or modification of the contract, those who keep the technology licensed during the case, standard contract provisions such as whether to agree to arbitration in lieu of litigation or litigation, integration phrases, etc. Add as necessary.

Trade secret

Valuable patents are included in the unpublished information envelope. This envelope is a trade secret know-how developed mainly by the use of patented technology. It is knowledge developed after the filing of the patent application and is not described in the patent specification because the patent law requires only to disclose the best form as of the filing date.

Trade secrets are protected by contracts between the organization and its employees, the organization and its independent contractors, the organization and business or technical partners. Intellectual property lawyers who conduct intellectual property audits should evaluate to what extent these agreements protect valuable trade secrets.

Authors including organization handbook

Organization copyright can be the most valuable asset. When an organization is based on art, copyright is the top priority protection of its intellectual property.

The perceptible material is copyright protected by the current US copyright law, fixed directly or indirectly to tangible media. It will be copied from the moment of creation, but complete protection can not be used unless the minutes are registered with the copyright office. The intellectual property attorney must check the status of the organization's written registration so that the court can enforce the copyright laws of the United States if the written material is infringed.

training

Once the intellectual property audit is completed and recommendations are made, a training program for all employees should be implemented so that the recommendations issued from the audit are securely observed. Training must be conducted at all levels of the organization. Organizations need to identify areas where employees need training and what level they need. After that, we need to design and provide appropriate training courses and materials, design and provide appropriate follow-up ongoing support.

Continue with part V.