Intellectual property: Legal advice for protecting yours

John Carter, Principle Member at Witzke Berry Carter & Wander, PLLC, and leader of his firm's Business Law Group, offers some best practices for protecting your intellectual property.

What's black and white all over? NOT intellectual property (IP). That IP is defined as "creations of the mind" makes it a decidedly gray matter. IP's complexity makes it easy to shove it aside as we deal with the "more pressing" (read: easier-to-understand) issues of the day.

Whether we recognize it or not, IP plays a starring role in many of our lives, with the U.S. Patent and Trademark Office recently crediting IP for employing 18 million Americans and generating $5 trillion annually. On the downside, IP theft took a $300 billion and 2.1 million job-bite out of these totals, reports the IP Commission on Theft of American Intellectual Property.

As an IT pro, you're often charged with creating, protecting and serving this influential, yet confounding entity known as intellectual property. How can you do this best?

Fear not. You have a number of protections in your arsenal. Depending on the IP in question, copyrights, trademarks, and patents might be in play.  The government is proposing stronger "hack-back" legislation and working with international law enforcement agencies to catch IP violators.

Security recommendations

On the tech side, a recent Verizon report (with data from international cyber crimefighters like the CIA) contains a list of security recommendations you might want to cross check against your system, as hacking, malware and data breaches are responsible for most IP theft.

But when it comes down to it, IP is all about people. People create intellectual property, protect it, and often steal it, either knowingly or unknowingly. And because people are involved, contractual protections strengthen traditional methods of protecting the property itself. Contracts set down in black and white what is okay, and what isn't, banishing any confusing gray area.

Who's at risk

As IT professionals, you often sit at the crossroads of the intellectual property firestorm.

On the design and development side, IT pros are targets for IP theft of new innovations and processes. The Verizon report found two-thirds of data breaches targeted financial and government sectors, with IT and manufacturing next in line.

On the network administration side, IT pros are targets for bribery-schemes and blamed for data breaches resulting in IP theft.

You create it and protect it, but what is "it?"  Look to your contracts to cut through the gray and see what's in black and white.

Whether it's your IP or not, you should study your contracts (that you may have already signed as a customer, contractor or employee) or determine which obligations you're under and how to uphold (or dispute) them.

Here's how to get started:

1. Determine the Intellectual Property. This is something you'll want to define, whether as IP creator or as employee of a business built on IP (2/3 of American businesses are focused on IP's "intangible assets"). IP is the exclusive right to a "creation of the mind." It can be a brand, invention, song, dance, process, or any intellectual creation. It can be a trade secret, like the mystery ingredient in your favorite hot sauce. It's the key differentiator, and these intangible assets can be owned, bought and sold. 2. Determine the IP's existing protections. Is it covered by a patent, registered design, trademark or copyright? In general, patents protect processes and formulas. Trademarks protect logos and brands. Designs protect three-dimensional shapes, and copyright protects publishable material. If your IP is not covered by patent or other legal registration, you may want to suggest it.  If it's your IP, keep your own secret until all of the applications are finished. 3. Look at the contracts involved. Examples of protective covenants include non-disclosure agreements, confidentiality clauses, non-compete agreements and other restrictive covenants. These covenants can be added to employment or collaborative contracts. These days, it can be as easy as a clickable "I agree" box on a pop-up screen.

If you're a contractor or employee, check to see where your contribution falls in the IP mix. Can you use the work in your portfolio? Does your work become the company's IP? The more clarity upfront, the better off everyone will be.

4. If it's your personal IP, keep in mind that contracts must be state and business-specific. Don't bother with boilerplate "legal" documents and contracts downloaded online. You may save a few dollars with a fill-in-the-blank, but God-forbid you have to use it - will it protect your interests and be enforceable? That depends on whether it meets the common law requirements in your state and the specific regulations governing your particular industry. In this age of IP crackdowns, you'll want something strong enough to hold up in court. You'll also want to give some thought to the concept of contractual privity, which basically sets out who is covered by the contract. Does every person who comes into contact with your IP need to sign something?  If not everyone, then who?5. Walk through a couple of what-if scenarios. What happens to the IP if you change jobs? If your employer goes out of business? If something happens to you, the IP creator? Think through these questions and make sure your contracts provide you with the necessary protections in black and white as part of a succession plan. 6. One last cautionary note: If IP plays a determining role in your life or job description, you may want to talk to a legal counselor to figure out the best course of action for your individual scenario. You don't need a lawyer for everything, but in these days of corporate crackdowns and sky-high settlements, make sure you have all your ducks in a row.John T. Carter is a Principal Member at Witzke Berry Carter & Wander, PLLC and leads the firm's Business Law Group. After receiving his law degree from the University of Miami, John spent more than a decade running a family business. He returned to the practice of law, with a goal of helping businesses with formation, transition and succession.