One of my mantras when advising clients is to pay particular attention to their intellectual property when thinking about building value in their companies. This requires a comprehensive IP strategy that covers IP creation and protection. It is best started from the get-go, but it is never too late. You’ll need it to build and protect your IP assets to help you to monetize what you have built.
As the first step, take an inventory of all the IP used in your business and make sure your business owns or licenses all of it. Founders, employees and independent contractors or vendors should all sign agreements that assign the right to what they have already created and that what they create going forward is owned, assigned or licensed to the business in perpetuity. You should also pay attention to safeguarding your confidential business information and trade secrets by having everyone who receives such information sign confidentiality and nondisclosure agreements.
The most important forms of IP are patents, trademarks, copyrights and trade secrets; but the definition I use in agreements is much broader and includes data, know-how, financial information, processes, etc., etc.
As part of the inventory, you should determine whether to seek protection, such as patent, copyright or trademark registration for technology developed by the business. Look at your business plan and decide in which markets your products/services will be offered and from there determine which jurisdictions to seek protection in. In addition, the analysis should be driven by a number of other factors, including:
- whether it is likely that you will get protection;
- how long it takes; and
- a cost-benefit analysis
From the perspective of the software used in the business, I realize that the use of open source software is often an attractive alternative to proprietary software—you need to find the balance and find a solution that satisfies your company’s unique business model.
I probably should have started with this, but conduct some due diligence regarding your business name/DBA, brand names, logos and design names before you start using them. I find that in most cases it is not a good outcome to find out post-launch or mid-stream that someone else is using the same names, etc., and might object to it. Rebranding at that stage is often not a desirable option.
Lastly, adopt a company social media policy and tell employees how to comply with it, including who owns works created by them and how they may share those works outside of the company.
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