Intellectual property checklist - Lexology Page 1 of 4

Intellectual property checklist

Blaney McMurtry LLP

Michael Schiff

Canada
March 3 2011

Creative ideas in product development and marketing provide opportunities for a company to
get ahead of the competition. If your company is developing new technologies or new brands,
you can build a portfolio of intellectual property protection to sustain your lead. You should also
determine whether other companies have IP rights in your field of business, since this is
potentially a minefield through which you need to chart a carefully planned course.

The following checklist provides some points your company should consider to help protect
your own intellectual property, and keep clear of IP owned by others. It is not a comprehensive
list of all the IP issues that may affect your business — but it is a good starting point for some
strategic IP planning with your legal counsel.

Patents: Protect your technology by function

A patent can prevent others from copying your technology by making products that are built in
a similar way, or perform a similar task. If your technology has features that are both new and
critical to its operation, patent protection may be available. But there are some tight timelines.

Have a notebook policy that prescribes how new data and ideas are to be recorded in
notebooks on a daily basis
Have an internal disclosure system to bring new discoveries to the attention of
technology supervisors and legal counsel
Review new technology regularly to identify features that can provide a competitive
advantage if kept exclusive. If these features are new and inventive, file an initial patent
application
In view of the potential world-wide market, consider filing a foreign or international
patent application within a year of each priority application
Periodically review pending patent applications to reallocate expenditures to newer
technology, when appropriate
Periodically review matured patents to identify protected but unused technology that can
be licensed out as an additional source of revenue

trade-marks: establish a brand

Each name and distinguishing feature of what you sell may be protectable as a trade-mark,
establishing an identity through which to win brand loyalty.

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Develop a compelling corporate image for your products and services by having a
structured process to create the names you use, your advertising slogans, packaging,
advertising, and website design
Before committing to a new product name or logo, consider commissioning a trademark
search to avoid names and designs already used by other companies
File a trade-mark application for each brand name, logo, and product ornamentation
that identifies or has come to distinguish what your company sells
Consider whether licensing a trade-mark to another company may help promote the
brand or increase your market share
Periodically conduct quality control audits on products and services sold under the
trade-marks you have licensed to others

ensure freedom to operate

Having patents and trade -marks of your own doesn’t mean that you won’t infringe patents and
trade-marks owned by others. Dealing with third-party IP in a proactive way can avoid
complicated legal issues later on.

Periodically search and evaluate patents owned by others that may block a product or
service that you intend to commercialize
For patents that are potentially problematic, decide how to manage your position: file for
patent revocation, design a work-around technology, or obtain a license
Periodically search and review trademarks owned by others that may be similar to
your own
For trade-marks that are potentially problematic, decide how to manage your position: file
for opposition or expungement, or consider rebranding

Protect your trade secrets

Rather than disclosing your technology in a patent application, some features may be more
suited for temporary or long-term protection as a trade secret — but only if you actively
maintain its privacy.

Establish an internal policy to identify and safeguard trade secrets (such as underlying
technology, unpublished patent applications and data, ideas, know-how, computer code,
and customer lists)
Have confidentiality and non -compete agreements with business partners, potential
business partners, contract employees, consultants, visitors, and others who may have
access to your trade secret information
Establish a chain of authority for approving publication or other public disclosure of
your technology. Have written agreements with your business partners about the
publication and patenting of joint inventions

Other forms of IP protection

There are several other types of protection in Canada and internationally that may be
especially appropriate for your area of technology. Consider these questions:

Is there an ornamental or non-functional design feature of a product that is worthy of

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industrial design protection?

Should you register the copyright of your company’s written and creative works?
Does your technology qualify for other forms of protection: for example, integrated
circuit topographies, data exclusivity for clinical trial data, or plant variety protection

Keep control of your assets

Your company needs to ensure that it has full ownership and control of important inventions
and intellectual property created on its behalf.

Employment, consulting, and contract research agreements should explicitly transfer

rights in inventions, copyrights and other intellectual property to the companyTrade -mark
license agreements should specify quality standards for branded products and how
quality will be monitored
Joint research or development agreements should clearly state which party will own joint
discoveries, and who will control the patent application and enforcement process

Optimize your website

The Internet establishes a strong public presence. Websites should be constructed to enhance
branding, safeguard intellectual property, and avoid misunderstandings by website users.

Register or acquire a family of domain names that reflect not only your company name,
but also branded products, trade-marks, and derivative names
Empower your public affairs and marketing group to take charge of your company’s
presence on the Internet so that the site reflects your corporate image
Have a Terms of Use section that indicates IP rights owned by the company,
acknowledges third-party trade-marks, and includes disclaimers and limitations
appropriate for the products and services you provide
Have a Privacy Policy section informing users about how you collect and use order
information and other data from the site

assert your intellectual property rights

Putting IP protection into place may not be enough to keep aggressive competitors at bay.
Make sure other companies know about your patents and trade-marks. Keep a lookout for
infringers — and take action to protect your exclusive rights when necessary.

Mark each product with the serial number of each issued patent that protects the product
or its use
Identify all trade -marks used with your products, services, packaging, promotional
material, and website with the symbol ® if the mark is registered. Otherwise, use the
symbol ™
Survey competing products and services periodically to see if they are using
technology covered by the claims of your patents
Survey competing products and services periodically in your channel of trade to see if
another company is using a trade-mark or guise that resembles your own

Your IP portfolio may enable you to stop infringers, collect damages, or both. But the Canadian

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Intellectual Property Office is not in the business of enforcing IP protection. If you suspect
infringement of your patent, trade-mark, or copyright, consult your legal counsel about what
action to take to assert and protect your rights.

Tags Canada, Intellectual Property, Blaney McMurtry LLP

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