Intellectual Property

IP Rights and Internal IP Audits

Speak to you on how to enforce your IP Rights.

The question we’ve posed in the agenda is “Who is responsible for enforcing my IP rights?” The answer is you are, as the owner of the IP.

In a sense, IP rights are no different than regular property rights. As a property owner you are responsible in protecting your own personal property. The government can help you, and when transgressions against those rights occur, just as in the case of real property, the government can step in and provide solutions. Thus we have our title “Enforcement of IP Rights Private Responsibilities and Government Solutions.”

Actually, we will look at this as a three step process:

  1. is to identify your IP. In other words, locate or find out what you have to protect.
  2. once you have found the IP, then claim it as your own.
  3. is enforcing the IP rights. That is once we’ve identified it, claimed it and have rights in it, how do we enforce it and stop others from taking it away or using it without our permission.

Following this presentation, we will be answering the question “Where Can I Go For Help Locally?”

I will touch on this issues, but in the upcoming presentation will discuss in more depth, what resources we as the government can provide to help you enforce those rights that you have acquired.

Again, three step process. Will cover—

  1. How to identify your IP.
    a. How to locate and identify your IP assets (IP audit)
  2. How to secure your IP?
    Strategic and Operational Measures a. Tips to prevent the theft of your intellectual property before it happens (Contracts with employees, conducting due diligence before transaction, etc.)
  3. How to enforce your IPR?
    Legal Measures To Remedy Theft Understanding options if your intellectual property is stolen

In order to protect your company’s IP, you will first need to identify your company’s IP.

Earlier today you learned of the different forms of IP. Now, we will have to apply that knowledge and analyze the various components of your business.

  1. there are materials for which the business already may have protection (things that are already registered or are in the process of being registered, such as pending applications)
  2. then the analysis turns to determining what can be afforded protection.

First- Assessment
What Trademarks do you own or Potentially have?
Anything capable of identifying/distinguishing your business

Registered marks (domestic and foreign)
Pending applications
Business names
Domain names

Trade Dress:
Product packaging or configuration
Website Design

Remember: Anything used to identify or distinguish the source of goods

Next- Evaluate your copyrights
Determine what you have that you have copyrighted or can protect via copyright


Registered Copyrights
Written Materials
Computer Software
Website Content

Next- What can you patent
Look for potential patentable items:
Mechanical Device
Chemical Composition/Process
Computer-Based Business Process (aka Business method patents or software patent)

Generally, there are three broad categories of patentable subject matter: processes, machines and articles of manufacture and use.

A process could be a method for making something, a method for using something, or a method for doing something. Processes include business methods, most software, medical techniques, Machines include devices and apparatuses. Articles of manufacture include mechanical devices, electrical/electronic devices and compositions of matter such as chemicals, medicines, biotech.

Next step in the Audit is examine business to determine what trade secrets you have to protect.
Next, determine if there are any Trade Secrets. Generally it is any information that is kept secret and provides a business with a competitive advantage.

Most business probably already have some that are protectable

Most common form of IP for a businesses. Can have an indefinite life, unlike patents

Unlike TM and patents, where federal law defines it, trade secret are covered by state law, so must look to the relevant state. But 44 states have adopted the Uniform Trade Secrets Act, so they have similar definitions.
It defines a trade secret as…(“… means information, including a formula, pattern, compilation, program, device, method, technique, or process, that:

  1. derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and
  2. is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.”

For example

Customer Lists
Pricing/Cost Data
Customer Information and Sales Practices
Business Plans
Financial Data/Forecasts
Manufacturing Techniques
Design Manuals
Production Processes/Specifications
Survey/Research Data (including negative R&D)
Computer source code
Employee Knowledge (inevitable disclosure theory)
——-Anything that that you have that if your competitor found out would give him an advantage

Once identified and determined what’s important, you can take steps to secure your IP


Review all documents and filings affecting title to IP to confirm a complete chain of title.
Review licenses and any contractual assignments.
Security interests, releases of security interests, changes of name

Review financing agreements, how is IP tied in?
Compare against information available to the public at the U.S. Patent and Trademark Office and the U.S. Copyright Office.

Have employees (or other parties) signed over the rights if they were involved making the IP?
Work-for-hire doctrineThe general rule is that the person who creates a work is the author of that work. There is an exception to that principle called “works made for hire.” If a work is “made for hire,” the employer, and not the employee, is considered the author. The employer may be a firm, an organization, or an individual. Look to certain factors that characterize an “employer-employee” (Control over employee, status, (benefits, taxes) The closer an employment relationship comes to regular, salaried employment, the more likely it is that a work created within the scope of that employment would be a work made for hire.

Once you have identified it- Prioritize IP to be pursued and protected

  1. Those that provide real competitive advantage
  2. Those have value in licensing, including cross-licensing
  3. Those that enhance asset base of business
  4. Those that can be used defensively to block competitors (specific for patents)

Evaluate benefits of protection vs. costs in getting protection
Patent filings are costly (financially and time-wise)
Consider maintaining as trade secret, instead of publicly filing for a patent.


Register your trademark with USPTO
File application for patent protection with USPTO

  1. maybe only a provisional patent applications (to lock in date of invention)
  2. maybe maintain invention as a trades secret and do not file for patent.
    Register your copyrights with the U.S. Copyright Office at the Library of Congress Can also file trademark at state level
    Register with Customs (discuss later as part of administrative enforcement)


  1. Pay Maintenance fees and renewal fees,
    **esp. for domain names
  2. Protect Confidential Trade Secret Info. from disclosure (only considered a trade secret if business takes steps to keep the information confidential.

2.A. Internal measures to maintain secrecy
2.B. External measures to maintain secrecy.

How to Protect trade secrets –
Implement protective measures-
Company policies and Employee Policies are very important

For Sensitive information be careful about:
Marking – “confidential” – everyone on notice that it is valuable information
Protection – physically secure the information
Storage – limit distribution
Transmission – be careful on how easily distributed case. Growing threat is use of small transportable USB/flash drives to store company data. Likely that the ease of which these can be lost, high risk of compromising trade secret info.
Destruction – shred and make sure documents are returned (e.g. failed mergers, departing employees, etc.).

If you don’t implement protective measures you jeopardized your trade secrets.

Implement Internal Measures to safeguard trade secrets.

  1. Non-Disclosure Agreement aka Confidentiality Agreement

A contract where a party promises that information conveyed will be maintained in secrecy. Trade secrets- only recognized if you keep them secret. Can also protect information that is not necessarily a trade secret. Can be used for non-employees also, such as in negotiations with 3rd parties to protect your IP/ confidential information.

2. Non-Compete Agreement
A contract where an employee agrees not to work for a direct competitor for a certain amount of time after leaving your company. Rule of reason (i.e. 1 year, limited geographically). Be sure to check state jurisdiction, b/c governed by state law. California has state laws that heavily restrict).

  1. IP Assignment
    Assigns ownership of that is created to employer/business.

Enact policy and procedures regarding treatment of confidential information. Distribute to new employees. May courts consider terms within as if it’s a contract with the new employee. Explains-

  1. Marking things confidential, limiting distribution, using passwords…
  2. For science-related business, where publications and speeches are popular explains when employees can make speeches and publications. Implements a review process for trade secrets
  3. Procedure for submission of ideas and new patents; explains Invention Disclosure Statements; how to maintaining an Inventors Notebook (important to identify date of creation for patents)

FOR DEPARTEING EMPLOYEES- Conduct an Exit interviews
Return and account for all confidential information.
Provide them copy of their NDA or non-compete
Remind them of their obligations –
Have them execute an “Acknowledgement” a document where that recognize their continuing obligations
Make sure exit process is uniform (1 person in HR do it) for consistency.

Cultivate an awareness of IP among employees
Screen new employees for high ethical standards
Train employees and managers on safeguarding IP

In addition to Internal Controls you need External Controls For many companies, the way they acquire their IP is through a 3rd party transaction.

Important with any business transaction to conduct due diligence
Transaction can be:


Transactional Due Diligence- (obvious questions, but must be methodical) Identify the IP

What is it?
– Do they/ have authority to buy/sell/license the IP?
Identify IP Owner
Are there proper assignments agreements? …with proper consideration … exclusive or non-exclusive…
Carefully review esp. in start-ups (ex. Employee invents something, company assumes it is theirs, files for patent, wants to license it… did employee sign a contract signing over invention?)
That’s why IP Assignments very important when hire new employees find out the policies they have to protect IP (ex. confirm NDAs are in place).

Any 3rd Party claims? Threats of lawsuits?
Examine the 3rd party – whether it’s a potential partner, vendor, outside contractor, consultant, licensor.
Want to know with whom you’re dealing. Do not share tech. and business secrets too readily

External Measures to Safeguard IP
Before you enter into the transaction and reveal anything valuableEnter into NDA/Confidentiality Agreement – Protects your information in case deal doesn’t go through Conduct IP Review of Transaction: Assess the TransactionIf it’s a licensing agreement- is it

Exclusive or non-exclusive?
Can you sublicense?
What the scope?
What territory?
What time frame?
What field of use?

How will you make sure your IP is protected by the licensor?
Indemnification Clause in K- in case you get sued because the licensor didn’t really own the IP or because it may infringe some other IP
These are things to consider when entering into any IP transaction.

Constantly Police your IP

Periodic review of market in key areas
Have employees monitor and report on new developments
Review competitors’ filings and registrations
Monitor internal controls to maintain secrecy safeguards.
Monitor and audit licensee’s to ensure compliance with licensing agreements

If infringement noticed. Take action, otherwise you risk waiver,
or barred by statute of limitations,
or court may consider consented.

Now that we have gone through and identified your intellectual property, and we have taken steps to secure rights in the intellectual property.
Need to enforce those rights…

How to enforce your IPR?

Legal Options To Remedy Theft:

Outlines the Legal options – if your intellectual property is stolen

Civil System– File Lawsuit in State or Federal Court Consider Alternative Dispute Resolution (ADR)

Criminal System – Have criminal proceedings brought U.S. Department of Justice

Administrative System – Seek administrative assistance U.S. Customs (Border Enforcement) U.S. Patent & Trademark Office

Enforcing IP Through the Civil Court System:
First must determine whether your IP has been taken or copied
Need to make an infringement determination or if its trade secret whether its been misappropriated
Discuss Later in detail on the elements of infringement

If Infringed, Send Cease and Desist Letter
Negotiate or Enter into Licensing Agreement
File Claim By Court System or ADR (such as mediation or arbitration)
IP Litigation gets expensive very quickly, so considering ADR or entering into licensing agreement are important options

If you determine that your IP has been stolen, what next steps do you take?

Contact other party and negotiate/ enter into licensing agreement (should be an option throughout the process)
Send out a Cease and Desist Letter
Consider ADR
File Lawsuit

Now we will consider Criminal System to Enforce your IP
US DOJ does criminal prosecution and investigation of IP related-crimes.

Criminal Division: Computer Crime & Intellectual Property Section – prosecutor
U.S. Attorney’s Office: Computer Hacking and Intellectual Property Units (CHIPS) – prosecutors
Specialized CHIPS units in CA, FLA, MO, NJ, NY, PA, TX, VA, WA
FBI – investigators
US Immigration & Customs Enforcement

The National Intellectual Property Rights Coordination Center (IPR Center)
IPR Center- multi-agency Center responsible for coordinating a unified U.S. Government response regarding IPR enforcement issues
They have an online form you can inform them of piracy and counterfeiting you may know of.

Briefly Compare Civil vs. Criminal Enforcement of IP

Majority of IP enforcement actions in U.S. are civil not criminal
Burden of proof is more difficult in criminal cases
-beyond reasonable doubt and willful (criminal)
–preponderance of evidence (civil)

Higher thresholds for liability- felony copyright infringement more at least 10 copies valued at at least $2.5K w/in 180 days. (crim) civil infringement (no minimums)

Criminal remedies can include prison term Factors evaluating whether to charge criminally:
Organized crime involvement
Public health and safety concerns
Commercial nature
Amount of loss and harm

Next look to how your can enforce your IP by the US Administrative System

U.S. Customs System
Provides protection for federally registered copyrights and trademarks that are also recorded with U.S. Customs. (separate from registering with PTO or Copyright Office)
Involved in the Detention, Seizure and Forfeiture of Fake Merchandise
Right to act on its own called Ex officio authority – random examinations, warehouse sweeps
Also, enforces exclusion orders issued by US International Trade Commission resulting from unfair import investigations (patents).

To get protection, must record your trademark and copyright with Customs.

  • copyright or trademark must first have been be registered with USPTO or Copyright Office. (separate procedure)
  • Patent not covered because would have to make legal determination of patent infringement (scope of claims, etc.)

Owners may provide U.S. Customs with information on suspected infringers:

Manufacturer, country of origin, entry ports, suspected dates, any other information they may have.

Once you record your IP, US Customs puts your info into their database accessible by CBP officers across the country and at all ports of entry. Customs can then seize infringing goods, and can start administrative proceedings against seized goods.

Record your registered trademarks and copyrights with them:
Trademarks are recorded for a term of years to run concurrently with the underlying registration.
Copyrights are recorded for 20 years, unless the copyright registration expires before that time.

The U.S. Customs Trademark/Copyright Recordation
To enable US Customs to monitor your IP you must record your registered trademarks and copyrights with them:
Can be done online under Intellectual Property Rights e-Recordation System Or can file Application Recordation form is available on internet site:

Next, if considering to distribute your IP abroad also be aware of the
Office of the U.S.Trade Representative

“Special 301”
Procedure used to identify countries that deny adequate protection for intellectual property rights.
Countries may be placed on the “Watch List” depending on level of IP protection.
May be subject to sanctions.
Review conducted each year, but also OCR (out-of-cycle) if needed.
Can be initiated by industry.

Ex. Ukraine was PFC, just taken off, Brazil subject to OCR

When entering a Foreign Market you should:
Determine the IP climate and seek local support to protect your IP
Contact the local trade associations for your industry
Contact local American Chamber of Commerce
Contact local officials who enforce IP

Hire a lawyer in the foreign market
Should work jointly with your U.S. lawyer providing local expertise
Take steps to protect and enforce your IP, based on local law
Under TRIPS we are seeing some of the same procedures such a the Customs and Border Enforcement issues I discussed.
The tips I mentioned before on protection and enforcement in the U.S. are just as applicable and should be considered here.

Lastly I would like to remind everyone about the STOP initiative.
Established in October 2004
It is the most comprehensive initiative ever advanced to combat piracy and counterfeiting.
It is designed to crack down on counterfeit and pirated goods
And also help small and mid-sized businesses in protecting their IP rights

We maintain a telephone hotline at 1-866-999-HALT
where IP experts are available to answer any questions you may have related to IP enforcement issues.

Recap- three step process.

I hope you have found this presentation helpful and I thank you for your time.

Trademark FAQ

Rule 2.142(b)(3) specifies that citation to evidence in briefs should be to the electronic record. Can you provide examples?

Yes. For ex parte appeals, a suggested format is “October 10, 2015 Office Action at 2.” For inter partes appeals, the suggested format is “1 TTABVUE 2.”

Trademark FAQ

Do the Jan. 14, 2017, rule changes apply to pending cases?

Yes, the rule changes apply to all proceedings, including those pending on Jan. 14, 2017. This also includes proceedings instituted prior to 2007 that are still pending.

Trademark FAQ

Did all of the rule changes come into effect on Jan. 14, 2017?

Yes, all of the rule changes came into effect on the same date, Jan. 14, 2017.

Trademark FAQ

Where can I find TTAB decisions?

On our website, you can access TTAB decisions from 11/19/1996 to the present. You can access these decisions through the TTAB homepage under “Board receipts & issued decisions,” or by clicking the Search and view TTAB’s decision summaries and final decision link.

Trademark FAQ

Where can I find more information on how the TTAB conducts proceedings?

You can refer to the Trademark Trial and Appeal Board Manual of Procedure “TBMP”. The TTAB also follows the Federal Rules of Civil Procedure.

Trademark FAQ

Will you fax or email me a copy of a paper from the file?

No, we do not fax or email papers to parties or other persons requesting copies. You can review or print papers from a file through TTABVUE.

Trademark FAQ

Can I look at a case file that is pending before the TTAB?

Case files are public records and are open to the public for review, except for certain documents filed under a claim of confidentiality. The easiest way to review a file is through the electronic system, TTABVUE.

To look at a file, you can review or print it out yourself using TTABVUE. TTAB records submitted prior to approximately 2001 are kept in paper.  An individual who wishes to inspect or copy one of the paper files is directed to the National Archives and Records Administration,

Trademark FAQ

Can I submit papers by fax or email to the TTAB?

No. Effective Jan. 14, 2017, all filings to the TTAB must be submitted through TTAB’s Electronic System for Trademark Trials and Appeals “ESTTA”. Trademark Rule 2.195(d)(3) bars facsimile transmission of papers to be filed with the TTAB. Submissions filed by fax transmission will not be accorded a date of receipt. The TTAB will not accept any filings by email.

Trademark FAQ

What is the hand delivery mailing address?

Trademark-related mail to be delivered by hand or other private courier or delivery service (e.g. UPS, Federal Express) to the Trademark Trial and Appeal Board, must be delivered to:

The Trademark Assistance Center

Madison East, Concourse level Room C55

600 Dulany Street

Alexandria, VA 22314