Intellectual Property Trigger & Checklist

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Intellectual Property Services

In today’s dynamic and competitive business environment Intellectual Property (IP) are key elements to maintain competitive edge in the market. Certain business activities can trigger IP issues; these business activities may increase the value of a company’s IP portfolio or undercut/eliminate IP rights, and may even infringe the rights of others. Some of the important IP triggers are:

Intellectual Property Triggers

  1. Buying, selling, or starting up a business
  2. Selecting a name or logo for a product, service, or company
  3. Developing a new product or service
  4. Improving an existing product
  5. Bringing on a key employee or contractor for design, research, or development work
  6. Providing business or technical information to suppliers or investors
  7. Launching a major sales effort
  8. Preparing new advertising or marketing literature
  9. Maintaining or expanding a customer list
  10. Creating original arts, crafts, or designs
  11. Writing software
  12. Searching for advantages in a competitive market

IP is legally fragile, meaning that once the owner’s right is lost or compromised, it is extremely difficult to, if not impossible; to recover those rights. Please find below a compilation of important checklist relating to IP issues.

Checklist For Intellectual Property Issues

Employee Issues

  1. All employees and consultants to execute agreements covering IP assignment, Non Compete and Non Solicitation to prevent them from recruiting employees or competing unfairly.
  2. Advise employees and consultants that the information they acquire or create is confidential and proprietary and is to be treated as such.
  3. Take steps to ensure that a new employee does not use his or her prior employer’s trade secrets or other proprietary information while in your employment.
  4. Conduct termination interviews with departing employees concerning inventions and trade secrets.

Trade Secrets

  1. Stamp CONFIDENTIAL or TRADE SECRET on all documents containing information that is not generally known to your competitors.
  2. Require that a confidentiality agreement specifically governing confidentiality, be signed before accepting any disclosure from an outsider.

Patents

  1. Immediately evaluate the desirability of seeking Indian and/or foreign patent protection on your inventions.
  2. Remember that a patent application must be filed before any public disclosure or attempts to commercialize the invention.
  3. Seek an opinion of non-infringement or invalidity from your patent counsel before you manufacture, use or sell a potentially infringing product.
  4. Remember that a patent is the only protection against legitimate reverse engineering.
  5. Obtain from all licensees of your patents, trademarks and trade secrets indemnity against product liability claims.

Trademarks

  1. Mark your unregistered trademarks with a “™” and your service marks with an “SM” after making application to the Trademark Registry.
  2. Seek registrations for your trademarks and service marks, including the non-functional, three-dimensional design aspects of your products.
  3. Following Registration of your mark, use the “®” symbol.
  4. Remember that, under the new law, you can file an application for Registration of a mark before that mark has ever been used, if you have a bona fide intent to use that mark
  5. Conduct full searches before adopting and investing in a new trade name, trademark or service mark.
  6. Utilize domestic and international trademark watching services in order to monitor the unauthorized use and registration of your marks by others.

Copyrights

  1. Mark the statutory copyright notice on all software, advertisements, brochures and other material which is protectable by copyright. The notice should include the “©” symbol, the year of first publication and the owner of the copyright.
  2. Remember that the copyright in software written by a consultant probably belongs to the consultant unless you have obtained a specific written assignment from the consultant.
  3. Consider obtaining a Copyright Registration for all copyrightable materials.

The information provided herein is intended for informational purposes only and should not be construed as legal advice or legal opinion on any specific facts or circumstances, and does not create a client relationship. While we try to ensure the accuracy of the information, we cannot guarantee that all of the information is accurate. The reader should never assume that information applies to his or her specific situation and should never act or refrain from acting on the basis of any content included in this information without seeking appropriate advice. For personal advice, please consult us at the below address.

Frequently Asked Questions About Intellectual Property Triggers & Checklists

Common triggers include launching a new product, hiring key contractors, sharing technical information with investors, or starting a new marketing campaign. Proactive IP Management is crucial during these transition phases to ensure you are legally protecting your assets and not inadvertently infringing on the rights of others.
Employees and consultants often generate valuable proprietary information and original designs. Without explicit IP assignment and non-disclosure agreements, the ownership of these creations can easily become contested. An experienced Intellectual Property Law Firm can draft these agreements to ensure all rights are clearly assigned to your business under Intellectual Property Law.
Before disclosing confidential information or technical data to outside parties or investors, a business must have signed confidentiality or non-disclosure agreements (NDAs) in place. Additionally, clearly marking documents as “CONFIDENTIAL” or “TRADE SECRET” helps establish legal standing under broader IPR Law if misappropriation occurs.
Before any public disclosure or attempt to commercialize an invention, you must evaluate your eligibility for patent protection. It is highly recommended to engage professional Patent Services to conduct a “freedom to operate” or non-infringement analysis. This ensures your new product does not violate existing patents before you invest heavily in manufacturing.
You should use the ™ (trademark) or SM (service mark) symbols for unregistered marks as soon as you apply to the Trademark Registry or establish common-law use. Once formal registration is granted, you can legally use the ® symbol. A specialized IP Law Firm offering comprehensive Trademark Services can conduct full clearance searches before you invest in adopting a new brand identity.