Getting Your Intellectual Property House in Order

Many organizations may be experiencing a slow-down or pause in the day-to-day projects and initiatives that typically fill working hours due to the ongoing COVID-19 pandemic.

As a result, these organizations may now find the time and resources available to allow a shift in focus to longer term, often neglected, projects. Now is the ideal time to address these projects in preparation for the pending economic recovery and a resurgence in standard business and transaction volume.

One example of an often neglected project or plan is the development of an organization’s intellectual property (“IP”) strategy, including a review of the organization’s IP assets. It is common for organizations not to turn their minds to their corporate IP strategy until they are asked to demonstrate or execute upon such a strategy – often in instances where a detailed overview of the organization’s IP portfolio and IP management processes are requested, such as in the context of an acquisition, investment, or asset sale. This often leaves the organization and its IP professionals scrambling to ascertain chain of title, seek protection for IP assets, or map the dissemination of IP at inopportune times or under extreme time limitations.

It is therefore recommended that if your organization finds itself with extra time or resources available, now is an opportune time to review your IP assets and IP management strategy, and take appropriate steps to fill in any identified gaps.

As part of this review, your organization should consider taking the following steps:

  • Develop an Organizational Confidentiality Policy– this policy should require employees to keep confidential and proprietary material in strict confidence, and only use and/or disclose such material internally on a need-to-know basis. Further, this policy can set out a clear approach to dealing with trade secrets, and require use of a Non-Disclosure Agreement if the organization plans to share confidential or proprietary information externally.
  • Communicate with Employees – internal communication should be prepared and distributed periodically (at least annually), to remind employees that all proprietary and confidential information must be kept strictly confidential and is subject to the organization’s Confidentiality Policy.
  • Include Notations on Documents – all confidential and proprietary information should be accompanied by markings or notations that indicate that the document in which it is present contains confidential and proprietary information, that unauthorized copying or further use is prohibited, and that display a copyright notice (if applicable).
  • Develop and Implement Standardized Agreements Contractor/Developer Agreements – the organization should develop template Non-Disclosure Agreements, Employment Agreements, and Contractor/Development Agreements that appropriately address the development and ownership of IP, and the handling of proprietary and confidential information. A policy or process requiring all employees to sign employment agreements that include standard, global IP assignment and confidentiality provisions, as well as a waiver of moral rights, should be implemented.
  • Put Technical Safeguards in Place – particularly sensitive IP or trade secrets should be subject to extremely strict access restrictions in order to prevent unauthorized access, and should be stored on a secure server. The organization should ensure that processes and safeguards are developed and put in place to facilitate the protection of this IP.
  • Patent and IP Review – all software, inventions and prototypes should be reviewed to determine patentability, and to determine what protections may be available and should be taken to protect such software, inventions and prototypes. As part of an IP Review, organizations should name everyone who was involved (both internally and externally) in the development of an IP asset, in order to establish a chain of title. Appropriate documentation should be used to record this information.
  • Trademark Review – all brand names, logos, and designs (including the organization and trade names) to be used in association with the organization’s services or products should be reviewed from a trademark perspective to determine how and if the names, logos or designs are and can be used, and whether they are eligible for protection via registration.
  • Copyright Registration – all original software and documentation developed by the organization should be reviewed to determine if copyright in same should be registered to protect the original work.

The above is an overview of some key considerations for your organization in the event that it is able to undertake a review of its IP assets and IP management strategy. There are, however, many additional issues that may arise or require attention based on the circumstances of your organization. Please do not hesitate to reach out to our MLT Aikins IP Team should you require help with your IP strategy, or have IP related questions – we have the extensive expertise to provide comprehensive assistance in your review, and would be pleased to aid you in designing and executing a review within your organization.

Note: This article is of a general nature only and is not exhaustive of all possible legal rights or remedies. In addition, laws may change over time and should be interpreted only in the context of particular circumstances such that these materials are not intended to be relied upon or taken as legal advice or opinion. Readers should consult a legal professional for specific advice in any particular situation.