Spring 2014 issue of Horizons

Registered: Trademarks, Copyrights, Patents Registered IP in the U.S. can be registered through the U.S. Patent & Trademark Office or the U.S. Copyright Office. Registration provides legal recognition of ownership and a level of protection against infringement. Though each of these is easily distinguishable as a unique intangible asset, the overall identification and management of an organization’s legally protected IP often proves difficult. In evaluating the need to inventory its IP portfolio, an organization should ask itself: ∙ Is supporting documentation related to IP filings including illustrations, schematics, internal communication, etc., easily accessible and organized in an effective manner? ∙ How quickly can your organization prepare for/respond to litigation related to IP infringement? Successful organizations that manage IP risks effectively must know how to identify intangible assets that require protection through registration and monitoring. Internal: Trade Secrets Trade secrets are IP withheld from the public or unauthorized individuals inside and outside of the organization. Trade secrets can include R&D, a method, design, formula, customer lists, or customer information. Trade secrets are not registered (like a patent) in order to avoid public disclosure. Trade secrets can be protected through non-disclosure agreements and other forms of legal recognition. Unlike patents, trade secrets do not expire and are not available to the public. However, nothing prevents an independent third-party, such as a competitor, from independently duplicating, and using, an organization’s trade secrets. ∙ Could your organization compile a list of all IP in a reasonable timeframe?

Any of these can diminish or completely eliminate an organization’s competitive advantage generated from IP. A company’s level of risk can be categorized as follows: Level 5 (Risk Prevention Enabled) ∙ Fully embedded in day-to-day business processes and strategies Level 4 (Risk Managed) ∙ Integrated approaches to managing risk across boundaries Level 3 (Risk Further Defined) ∙ Formal approaches to managing risk are in place and widely implemented Level 2 (Risk Defined) ∙ Formal approaches to managing risk are in place and partially implemented

Level 1 (Risk Awareness) ∙ Awareness of need but little action

Organizations that are Risk Managed or Risk Prevention Enabled often take the following actions to protect their IP:

∙ Identify and inventory existing and development-stage IP

∙ Ensure IP is properly registered, copyrighted, trademarked or patented

∙ Monitor the unauthorized use of IP

∙ Provide training around the importance of proper IP usage and protection

∙ Designate an IP “champion” to oversee an IP risk management approach

Identifying Your IP Inventory A first step in protecting IP is to take stock of your IP. IP can be classified a number of ways. Here we identify IP using three categories: registered, internal and communications related, recognizing that they are not mutually exclusive.

Part of the process of developing an effective IP control environment is to identify

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