Companies like Intel Corp. and Xerox Corp. each have more than 20,000 issued patents. Why should companies expend so much effort to create this many patent applications and invest so much money in related legal fees? This is the price many companies are paying to safeguard their trade secrets.
To help safeguard your assets and ultimately position your company to be more secure, innovative and profitable, keep these six intellectual property (IP) considerations in mind:
Take an IP assessment
Look at the countries you are doing business in and consider how you will protect your IP in those countries. There are patent cooperation treaties (PCTs) that allow you to file for protection of your U.S. patents in those countries. Make sure you have PCTs filed to protect your IP in places such as Japan or Germany, where they enforce the PCT vigorously.
If you outsourced some of your engineering team or IT staff to another country such as India, and one of your team members invents something new that you feel should be the sole intellectual property of your corporation, you might be surprised to find out that the Indian government has rights to your patent filing. So be careful and try to keep new ideas closer to home, especially if you are based in the U.S. or Europe.
Whom can you trust?
What are you doing to keep your trade secrets and IP secure? Can you trust your employees not to deliver this information to the competition? How much of this information is in electronic form?
I've learned from experience that oral agreements and handshakes are only as good as the people with whom you are doing business. There may be times you will be forced into a court of law to uphold an oral agreement or a 'handshake' deal that you made to keep your IP trade secret and under a nondisclosure agreement. You should be aware that when it comes to your IP protection strategy, limiting trust and access is always important.
Electronic records are powerful tools
Under the U.S. government's Federal Rules of Evidence, your electronic records are as admissible in a court of law as your paper records. So keeping electronic logs and frequently backing up your electronic records is very important. This includes your file share, Web site, mail server, source code system, multimedia production system, financial database, customer records and customer relationship management database as well as any other electronic form of business material -- especially those which you consider to be trade secrets and IP of your organization.
Practice litigation readiness
According to Tom Klaff, CEO of Surety LLC in Herndon, Va., you should ask yourself: "Can you withstand a data integrity challenge? Are you 'litigation ready'?" If you are, then you:
- Have the right people in place to manage your electronic record management systems;
- Have conceived, implemented and documented the right processes to ensure that your electronic records are classified, managed and preserved properly with the highest levels of security; and
- Have adopted the right technology and systems to capture, secure, manage and archive your electronic records.
Practicing litigation readiness will enable you to defend a seemingly innocuous record generated today. Such items can include an email or Visio drawing that at some point may be your last and only line of defense to save your patents, protect your billion-dollar revenue stream, and preserve your company's shareholder value in the throes of a legal dispute.
You can achieve this recommendation by offering your company an internal IP self-assessment, once or twice per year. If you can handle the load, quarterly assessments would be even better. Just repeat the process of collecting and documenting your IP assets, and see if anything new has been added to the list.
The value of IP
At the end of the day, not only will you have a good handle on the intangible assets of your organization, but you may even find some assets that are worth selling or licensing. Make sure the IP owner can help you document a current and projected value of each asset. This will help you determine a budget for putting into place the proper measures to proactively protect your IP and help your CEO, vice president of business development, and/or product managers to determine the proper business routes in productizing, licensing and/or selling these intangible assets.
Remember, if you assess your IP on a regular basis, you are taking proper steps for due care and due diligence to develop and harvest the maximum value of these assets. Finally, if and when the time comes to defend your IP against internal theft, external copycats or competition attempting to duplicate or work around your system, you'll be better prepared to meet these challenges head on.
Gary Miliefsky is a CISSP, founding member of the U.S. Department of Homeland Security and a member of the board of directors of NEISG.org. He is also the founder and CTO of NetClarity Inc. and can be reached at searchCIO@netclarity.net.