Whether you want to patent a new invention or keep your trade secrets secret, Intellectual Property (IP) law is the answer. Brand development, copyright, licensing, domain names—these may sound like completely unrelated aspects of running a business, but all fall into the wide range of IP topics affecting companies’ and individuals’ assets and privacy. Without proper guidance and protection, IP holders could see the value of their property diminish, or worse: lose the “secret sauce” that keeps their organizations competitive. Because IP law is so beneficial and comprehensive, there are many moments in life when you should consider talking to a lawyer. Some are less obvious than others. Make sure to reach out to an IP attorney… Before Starting a Business Intellectual property fulfills numerous, pivotal functions in a startup’s lifecycle, especially at the outset. Patents not only help businesses safeguard their IP assets; they can also attract early investors and lucrative partners interested in adopting new technology before its entrance into the broad marketplace. And by not taking the initial steps to protect their IP, or drafting faulty contracts without the aid of an attorney, business owners expose themselves to long-term risk. Mistakes made at a business’ beginning throw its entire existence into jeopardy, in ways that may take years to manifest. Jonathan Wachs, chair of Offit Kurman’s IP practice group, has written an article for founders considering hiring IP attorneys. Click here for his guide. When Changing Jobs or Hiring/Firing/Engaging Others Each foray into a new occupation, organization, or role is also an exposure to IP risk. Whether you are about to hire a new vendor or sign a new employer’s non-disclosure agreement (NDA), a thorough understanding of your rights and options will allow you to make the right decision for your IP and prevent others from taking advantage of your assets. An IP lawyer will help you identify problematic contractual language, redraft if necessary, and explore available alternatives. Looking for a place to start? Click here to download a free sample NDA, courtesy of Offit Kurman’s IP group. When Allowing Others to Use Your Name, Image, Writings or Other IP Despite a common myth held by many Internet users, your name and likeness are not automatically free to use online. The same is true for your digital content such as photos, videos, and blog posts. The law ensures that if and when you do choose to share it, you retain control over your IP—how and where it’s used, as well as fair compensation for its use. But because of the myriad, sometimes circuitous aspects of licensing law, IP holders frequently make mistakes or misunderstand their options. Click here to get in touch with a qualified attorney who can help, and click here to download our free sample privacy release for use of website content.
After Receiving Or Before Sending a Patent Demand Letter
A patent demand letter, also known as a cease and desist letter, is an important and often emotionally fraught IP enforcement tactic. Sent by a patent owner, the letter alleges that one or more parties have infringed on a certain patent, and may request the infringing party stop using or producing the product in question. It may even demand payment, spurring further anxiety on the part of the recipient. IP attorney Jon Wachs has taken a look at patent letters from both sides of the equation. Click here to read what he recommends you do if you receive a patent demand letter, and here for his guide for patent enforcers.
Before Registering a Website
For brand owners, buying a domain is not only about securing the simplest website address possible; it is also a matter of protecting the brand’s online reputation from those who wish to do it harm. For years, the generic top-level domain (gTLD) names available to registrants were limited to a relatively small set of gTLDs such as .com, .org, .net, .biz, gov. That paradigm is changing this year, as a new spate of gTLDs such as .beer, .best, .city, and .sucks have entered the marketplace. Mr. Wachs explains why trademark holders who ignore these changes risk losing control of their brands in his IP Alert from April 16.
When Drafting License or Service Agreements
When is your software not your software? When it is provided to you through a subscription service agreements. Unlike a license agreement, which grants users the right to use a copy of the program, software as a service (SaaS) functions by giving users access to a service hosted online. That means that, in many cases, you may not own what you think you own—including your photos, data, and customers’ data. “Whether you are a provider or user,” Mr. Wachs cautions, “be sure to understand how your obligations and rights differ under a subscription service agreement compared to a license agreement.” Read his blog post on the difference between the agreement types, as well as three clauses that should be considered in any service agreement, here.
The Same Time You Start Planning Your Will and Estate
As more of our lives take place online, we leave behind bigger and bigger footprints in the form of account information after our deaths. Unfortunately, few laws address individuals’ digital legacies and assets, and few people have taken advantage of existing legislation and policies. In his recent article about Facebook’s new digital inheritance policy, Mr. Wachs explores the complex current environment surrounding legacy data along with the sometimes damaging ramifications that arise when we neglect to protect the accounts of the deceased. Click here to read the IP Alert. Looking for more information about intellectual property? Download Offit Kurman’s free Intellectual Property Audit Review Checklist.
ABOUT JONATHAN WACHS
Jonathan Wachs provides strategic counseling and operational advice to clients in the areas of intellectual property, commercial transactions and outsourced legal departments. As head of the firm’s Intellectual Property Group, Mr. Wachs works closely with clients to develop, register, analyze, enforce, and transfer intellectual property assets in a customized, cost-efficient, and highly effective manner. Additionally, he conducts intellectual property audits through which clients learn the nature and value of their intellectual property assets and the steps needed to protect such assets from misappropriation or dilution. As a business lawyer, he has successfully negotiated and completed several multimillion dollar business transactions and has served as general counsel to several small and midsize businesses and organizations in various industries and professions. He also manages a blog about intellectual property issues, Friday Factoids. Mr. Wachs co-manages New Paradigm Counsel, a service through which Offit Kurman delivers customized, comprehensive and cost-effective outsourced legal departments. Through New Paradigm Counsel, Jon served as outsourced general counsel for a government contractor, a large printing business, a payment processing company and an identity theft restoration business.
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