As a corporate law firm focusing on mergers and acquisitions, we have a very wide range of clients across a variety of industries. Many business owners have concerns about Intellectual Property and how to protect and manage their assets. While we can tackle some of minor IP needs, we do not specialize in this area and tend to refer out to legal counsel who have deep experience in this arena.
To answer some of our most-asked IP questions, I’d like to introduce a colleague and friend. Meet Patty Ho. She is a shareholder at Sheridan Ross, P.C. and her practice focuses on patent, trademark and other intellectual property litigation and counseling.
What is Intellectual Property?
Intellectual property is a property right in an intangible creation. In the U.S., these property rights are codified in our federal and state laws, and through judge made law, called “common law.” The most familiar intellectual property examples are patents, trademarks, and copyrights, but they can also include trade secrets or formulations that are at the core of a business’ work.
At what point in my business should I consult with an IP attorney?
I tend to see the IP benchmarks for businesses at the funding stage, product design or launch, an employment context, or when a business sees its IP infringed in the marketplace. In essence, these are all events or time periods where the business has to take stock and control of its assets for business purposes or to compete in the marketplace.
In practice, I most often get involved at the product design or launch stage, or when a client suspects its IP is being infringed.
I think my IP has been stolen. What recourse do I have?
Depending on the situation, cease and desist letters are most often the initial recourse in an attempt to reach an early resolution between the parties. Litigation or mediation can be the next step if the parties cannot come to a resolution by themselves. I always advise clients that investigating and gathering as much information related to the misconduct helps me do my job much more efficiently and effectively. This can mean investigating the source of an infringing product, how it is being imported or distributed, or building into the business procedures for logging instances of confusion.
How are trade secrets protected?
In Colorado, trade secrets are protected under the Colorado Uniform Trade Secrets Act and may also be protected under the Federal Defend Trade Secrets Act. Most states also have their own corresponding trade secret statutes. Generally, to enforce an asset as a trade secret, the business must take measures to keep its secrecy, and this is often done through non-disclosure agreements and internal procedures controlling access. This can mean working with an IP attorney to draft such procedures or draft and review employment and other agreements.
What agreements should I have in place with my independent contractors and employment agreements?
Generally, most IP provisions in contracts and employment agreements will provide that the contractor or employee assign their rights in any inventions or other protectable IP to the business. The return and/or confidential nature of company information the individual may be exposed to or work with should also be addressed. Some employee agreements involving managerial or executive personnel may also have non-compete agreements.
What’s the most interesting aspect of being IP lawyer and what do you enjoy most about this type of law?
My favorite part of the job is working with innovators in a variety of industries and learning about their business to shape a solution that is tailored to them. I ultimately see my role as a problem solver and counselor to help clients reach their business goals.
More About Patty Ho
Patty Ho is a Shareholder at Sheridan Ross P.C. where her practice focuses on patent, trademark and other intellectual property litigation and counseling. She has represented clients in a variety of intellectual property cases in state and federal courts as well as in front of administrative bodies. Patty’s experience includes handling all aspects of litigation in cases addressing issues of patent and trademark infringement, copyright infringement, false advertising, unfair competition, and trade secrets. Her practice also includes counseling on compliance with privacy and data regulations, licensing, and patent and trademark prosecution as well as handling matters before the Trademark Trial and Appeal Board. Click here to contact her and learn more about the work she’s doing for her clients.
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