2025 IP Resolutions Start With a Review of IP Assets

Kick off 2025 by reviewing your company’s IP assets! Whether you’re new to IP protection or a seasoned pro, it’s crucial to keep track of your valuable intellectual property. Scott Hervey & Tara Sattler break down key steps in safeguarding your trademarks, copyrights, and patents on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel.

 

Show Notes:

Scott:
As 2025 kicks off, it’s time for companies to review and take stock of their intellectual property assets. This applies to every company, whether you are new to IP protection or an old pro. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Tara Sattler. We’re going to break down how to review and safeguard your company’s most valuable intellectual property assets on this installment of The Briefing.

Tara, welcome back to the briefing. Happy New Year to you.

Happy New Year to you, too, Scott. Great to be here again.

Tara:
Great to have you. Let’s jump right into this. As you know, intellectual property is a company asset, just like inventory. No CEO or CFO would think of running a company where they didn’t know the extent of company inventory. Likewise, it makes no sense for a company to not have a firm understanding of all of its potential intellectual property assets. Even companies that regularly take steps to protect intellectual property through, for example, registering trademarks or registering copyrights, should yearly review their IP assets, and this can prove to be very beneficial.

Scott:
Understanding the extent of a company’s IP holdings usually starts with what’s known to the company, such as all registered copyrights, trademarks, or patents, both domestic and foreign. After compiling a list of those IP assets, the next step would be to review what the company is using and compare that to the list of registered or pending marks for registration. Let’s discuss with trademarks since every business has at least one trademark. Outside of any registered trademarks, check your marketing and promotional materials, website, mobile app, and social media. If these materials show use of trademarks, logos, or slogans that are not already the subject of a trademark registration or application, then these marks should be cleared for use to prevent unintended liabilities, and they should be considered for possible registration.

Tara:
Don’t overlook company social media accounts, as mentioned, domain names and toll-free numbers, which may also serve as potential trademarks. Does anybody use toll-free numbers anymore? I don’t know. They’re not as popular as they used to be. Be sure to confirm that all domain names and social media accounts are registered to the company. You’d be surprised at how many times a domain name or a social media account is registered to to an individual company employee or to the marketing company that created, let’s say, the company website or is doing social media engagement and not the company itself. Also, if the company has changed the graphic user interface to any of its technology products or has changed product packaging, point of sale displays, or product designs, these may also be protectable trade dress.

Scott:
That’s right. Next up would be assets that are subject to copyright laws. In reviewing for copyrightable content, check the company’s website, marketing materials, manuals, YouTube videos, podcasts, posted content on Instagram, TikTok, social media, and other social media, photos, software, blog posts, articles, white paper, and all things like that. While the cost of registering every piece of content may not be economical, companies should at least maintain inventory of all copyrightable works and then make a decision from there.

Tara:
Right, I agree. Let’s talk about patents. On the patent front, a company should always be aware of any new inventions under development, and it’s good practice to investigate the status of any inventions developed by company employees during the past year. Such inventions may be protectable under federal patent laws. Now, an inventor must secure a patent application within a very short period of in order to prevent the work from falling into the public domain. And that’s even shorter internationally. Companies that routinely produce new inventions should put to place a process which enables inventors to disclose a potential invention to a responsible executive well prior to the invention being disclosed to the general public in order to protect international patent rights and watch the clock for US patent rights.

Scott:
Trade secrets are a category of proprietary assets that companies may not truly understand or appreciate. This is probably because something can either be a trade secret or not a trade secret, depending on the manner in which the company treats it. Trade secrets are items not generally known by the public, but have economical value and are the subject of reasonable precautions to maintain their secrecy.

Tara:
Trade secrets can lose their protected status if they’re no longer kept secret. Specifically, if a company’s trade secret or a bit of information or items like a customer list or vendor list that a company considers to be proprietary and trade secret, if that becomes generally known to the public, then it loses its trade secret status. Also, if the company does not take steps to keep that information secret, it can also lose its protected status. Now, this includes physical security measures, also contractual security measures, and internal policies regarding data sharing.

Scott:
It’s worth noting that unlike patents or copyrights, trade secrets have no set duration of protectability. However, this protection depends entirely on maintaining the secrecy like you were talking about. Scott, Scott. If the information becomes public or the owner fails to take reasonable precautions to keep it secret, the trade secret then loses its protection.

Tara:
Trade secrets, as you said, they have no saturation of protectability. Some companies choose instead of filing a patent, for example, the the formula for Coca-Cola. My understanding of that is that it is a trade secret. It’s It’s not subject to a patent. It could be, but it’s not subject to a patent because patents have a duration. After that, the invention itself becomes available to the public. But as long as a company keeps something secret, like the formula to make Coca-Cola, that can live on forever. Let’s talk about items that can be protected by state trade secret laws. It includes source code and related documentation, customer lists, employee knowledge, training and experience, proprietary technologies, definitions and formulas, specifically developed customer information, sales practices, negative information, such as negative results from research and development projects, and customer and consumer surveys. Each of the above could constitute proprietary trade secrets depending on whether its owner took reasonable steps to maintain its trade secret status.

Scott:
A special note about customer data. In addition to regularly reviewing IP assets, a company should regularly make sure that its privacy and data use policies comply with the manner in which it collects and uses customer and employee data. In the US, privacy laws are generally driven by state law, but there may be applicable federal law depending on the nature of the information collected.

Tara:
That’s a great point. Data security and customer data laws are changing rapidly and continue to change yearly. Also, like you said, if a company conducts business internationally, it may have to adhere to the privacy laws of foreign countries. What company that’s providing either goods or services online is not doing business internationally. Almost every consumer product company that sells online is doing business internationally.

Scott:
Yeah, that’s right, Scott. Now I think we’ve talked about IP assets that are known to a company. The other thing the company should do is to look into what may not be known. Sometimes, marketing departments and independent divisions spin out valuable intellectual property assets that, for one reason or another, never made it past the desk of general counsel or a responsible executive.

Tara:
Now, that’s a good point, Tara. Also, intellectual property rights acquired by way of contractual agreements may sometimes be overlooked. Items that were developed or created through the use of independent contractors, such as consultants, photographers, website and application developers, other software developers, advertising agencies, media firms, graphic artists, etc. They may be company assets depending upon contract terms. If the company intends to own all of the rights including any intellectual property rights in these types of works, works created by these independent contractors, then the agreements with these independent contractors should have proper intellectual property vesting language, such as work made for higher language or/and an assignment provision, or both. If the agreements with these independent contractors were only verbal or were written and didn’t contain proper IP transfer language, then the company needs to make another resolution, make sure that it actually owns the intellectual property it paid for because it doesn’t. Sticking to this resolution would include a review of standard independent contractor and employment agreements to confirm that they have proper assignment language and proper confidentiality provisions.

Scott:
Unintended liabilities can also result from a company’s interaction with independent contractors who have been hired to create something for the company. Whether it’s a website designer hired to redesign a company website, a software developer hired to work on a company’s app, a graphic artist hired to create a new logo or artwork, or a marketing professional hired to create social media assets. We’ve seen countless instances of these types of vendors taking shortcuts and borrowing assets from existing sources. Unless the company executive is closely managing these vendors when they do their work, it would be difficult to determine whether or not they engage in acts that may be considered infringement until the time that the company receives a cease and desist letter or something even stronger than that potentially.

Tara:
Right. Our podcast audience couldn’t really see you include the air quotes around borrowing. I can’t tell you. We see a few of those letters every year. Our clients are always very like, How did this happen? We hired this company to create this new logo or to create this white paper or to do X, Y, or Z. This always comes up. There are precautionary steps a company can take to prevent these types of unintended liabilities. A company should always have a written agreement with vendors, which unconditionally requires them to indemnify the company for any claims of infringement resulting from the works that the vendors were hired to create and did, in fact, create. Additionally, a company should require these vendors to carry insurance that would provide coverage for such a claim It’s either errors and omissions insurance or some type of professional liability insurance, and the company should be named as an additional insured on these policies.

Scott:
Those are really good points, Scott. Lastly, and most importantly, the company should have a general understanding of who they’re doing business with. A little time spent researching whether the vendor has negative claims with the Better Business Bureau, has any licensing issues, if there are generally satisfied customers, if there are any pending lawsuits, all those sorts of things can really tell a company quite a bit about the work habits and the ethics of any potential vendor they’re going to use.

Tara:
Right. And That little ounce of prevention is really, it’s worth the time because the aggravation of dealing with a claim by a third party when you then can’t find the vendor or the vendor doesn’t engage with you or despite the fact that you have an indemnification provision, now you have to go after the vendor for indemnity. It’s well worth the time spent doing that investigation. After you have your IP inventory, the next step is to identify which items have protection and which do not. The company, along with counsel, should then determine which of the unprotected intellectual property assets makes sense to protect. Sometimes the cost to secure protection outweighs the potential value, or the protection is simply duplicative. It’s probably best to always do a cost-benefit analysis.

Scott:
Yeah, that’s right. I think that’s why we’re talking about all of these steps and suggesting a new review each year because something that may not be worth protecting last year may actually be worth protecting this year. It’s always good to stay current with your review of all intellectual property.

Tara:
No, fully agree. Companies may have new services, new service offerings, new goods that they’re selling. They may develop a new line of goods. They may have a spinoff company. Companies should always be looking at their IP assets. Those IP assets become very important when a company is sold or when you are the purchaser of another company, it’s quite a good thing, and it saves a bunch of time to have the list of IP assets in hand because it’s In the event of an M&A transaction, you’re going to have to put that all together. If you haven’t already started, it’s going to take quite a bit of time to put that entire list together.

Scott:
But time well spent.

Tara:
Right. Thanks, Tara, for joining me today.

Scott:
Thanks, Scott.

Tara:
That’s all for today’s episode of The Briefing. Thanks to Tara for joining me today. Thank you, the listener or viewer, for tuning in. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.