Legal Issues: Protecting Intellectual Property Rights By Devon E. Hewitt Partner, Piliero Mazza PLLC For technology companies, intellectual property is the company’s crown jewel. However, all companies have intellectual property assets—information that provides the company with its competitive advantage and makes the company, and the product or services it sells, unique. The law recognizes and protects various types of intellectual property assets: patents, copyrights, trademarks and trade secrets. A patent is a grant by the federal government for “inventions.” A patent provides the creator of an invention an exclusive right to make, use or sell the invention for a certain period of time—usually 20 years from the date the creator submits an application for a patent. A patentable invention is one that consists of “any new or useful process, machine or manufacture.” Patents are difficult and expensive to obtain, but the promise of a 20 year monopoly provides a strong incentive for companies to seek patent protection for certain inventions. Trademarks consist of a word, name or symbol used by a business to identify and distinguish products and/or services from those provided by other businesses. The term “trademark” is really a sophisticated term for a company’s brand, known by name or logo, in the marketplace. A company gets protection under trademark laws simply by using the brand name, mark or symbol. However, if the brand name or logo could cause confusion among consumers because of its similarity with another name, mark or symbol, the right to use that name, mark or symbol could be lost. Accordingly, most companies do a trademark search before adopting a brand name or logo. A trade secret is any information that is considered confidential and proprietary and that has economic value. The best example of a trade secret is the formula for Coca-Cola. Rumor has it that the formula is stored in a safe on the top floor of the company’s headquarters in Atlanta and only two officials in the company have access to the safe. Trade secrets can include more mundane information such as customer lists or internal processes. Like a trademark, legal protection for trade secrets is automatic as long as the company can demonstrate that it has taken precautions to ensure that its trade secret remains secret. Copyright law protects the majority of intellectual property assets. Copyright law protects any original work that is fixed in tangible form. For example, copyright law protects a story written by a children’s author. Copyright law does not protect the ideas or contents of the story, but the manner in which the ideas or contents are expressed. Under copyright law, an author of an original work has the exclusive right to that work for his or her life plus 70 years. The protection is automatic; from the moment that pen is put to paper, an author’s copyright provides the author with the exclusive right to use the work, copy the work, distribute the work or prepare derivative works and prevent others from doing so. To the extent that a company’s intellectual property assets are also its stock in trade, those assets are typically traded in the marketplace through contract or licenses. A license is an agreement by which a copyright holder transfers some of its rights of copyright to another party, such as the right to use, copy or prepare derivative works. The license generally describes the terms or conditions under which the licensee may have these rights. For government contractors delivering intellectual property to the government, intellectual property is typically given to the government subject to a license, even though the term “license” may not be used. The federal government’s rights in intellectual property delivered pursuant to a government contract are described in the Federal Acquisition Regulation clauses included in that contract. Generally speaking, although a contractor may provide the government with license rights, it does not give up its copyright to the intellectual property it has delivered. As is the case with most contracts, however, the devil is in the details. Contractors should educate themselves about the FAR provisions included their government contracts and investigate whether those provisions affect the company’s right to use or transfer the intellectual property assets of the company. Devon E. Hewitt is a partner at PilieroMazza PLLC. Ms. Hewitt has over 15 years experience in the field of government contracts, representing both small and large contractors. She advises clients on a wide variety of issues including FAR compliance, small business regulations, Intellectual Property and data rights, Service Contract Act regulations, noncompete, nonsolicitation and nondisclosure agreements, subcontracts and teaming, FOIA, novation, audits and investigations and minority contracting issues. She can be reached at dhewitt@pilieromazza.com.