You update your computer software when new versions are released. You renew your insurance every year. You follow the manufacturer’s suggested maintenance schedule for your vehicle. And yet, when was the last time you checked to make sure your intellectual property (“IP”) was up to date. More importantly, do you know what your IP is?
Just because you may have had some IP at one point in time does not mean you necessarily still have those IP rights. Similarly, just because you’ve been using IP to make or sell your product does not necessarily mean you own that IP.
What Is IP?
As discussed in previous articles, IP is typically comprised of patents, copyrights, trademarks or industrial designs. For more information on recognizing IP, please see our March 2008 issue of the Legal Alert.
Did You Capture It?
If you have any types IP for which you have not applied for formal protection, you may be passing up an opportunity to entrench your place in the market by restricting the activities of your competitors.
Act Quickly
Failure to properly apply for patents and industrial designs in a timely manner can result in the loss of those IP rights. If your invention or design has been shown to the public, sold, described, or been the subject of a publication within the last year, you have a deadline counting down against you. Although patents and industrial designs are not available in most countries after any of these events, you must file for protection within one year of them in Canada and the US to get protection there. Similarly, failure to diligently enforce or continue to use your trademarks can result in the loss of your trademark rights.
Now Where Did It Go?
Just like car insurance, many forms of IP such as patents, need to have annual or periodic maintenance fees paid to keep the registration in force. Failure to pay these maintenance fees will result in loss of the patent. Patents and trade-marks should also be updated just like software to ensure they still cover your current activities. For example, patents should be assessed to ensure they cover your current product, and trade-marks should be assessed to ensure they still cover the current wares and services you provide. Questions to ask may include:
• Have you made improvements to your product?
• Have you started offering new products or services?
• Have you changed the look of your product?
• Have you changed the countries in which you sell your product?
If the answer to any of these question is “yes”, you may not still be adequately protected you should speak to us about assessing and updating your IP protection as soon as possible.
But Who Owns It?
It is also important to ensure that your company actually owns the IP rights that it thinks it does. This requires ensuring that any IP created by an employee is properly assigned to the company. This may also require ensuring that any IP you own is held by the right branch of a group of companies.