All Posts
January 26, 2016

Crucial Moments in Life to Talk to an Intellectual Property Lawyer

By Jon Wachs, Principal at Offit│Kurman

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.

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.

 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.

Use 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 Kristin M. Nevins has taken a look at patent letters from both sides of the equation. Click here to read what she recommends you do if you receive a patent demand letter, and here for her 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.

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,” Ms. Nevins cautions, “be sure to understand how your obligations and rights differ under a subscription service agreement compared to a license agreement.” Read her 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.

This article originally appeared on the Offit Kurman Blog


Stay Connected

Sign up for our weekly list of classes & events