An Internet presence is essential for most businesses. When going online, there are a number of intellectual property issues that require consideration. The Internet Group at Fish & Richardson P.C. has prepared a checklist of intellectual property issues to consider when doing business on the Internet.
Domain name protection
Perform a trademark clearance search prior to domain name selection
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Register generic versions (. com, .net, .org, etc.), country code versions and common misspellings of your domain name
Obtain a registered trademark that is identical to your second-level domain name
Contractor developed Web sites and Web pages
Obtain ownership of copyrighted Web pages
Get warranties/indemnities for third party infringement claims
Preserve trade secrets and confidential information
License content from third parties
Legal notices & policies
Post copyright and trademark notices and symbols
Publish patent numbers for patents covering processes/software operating the Web page
Acknowledge third party trade/service-marks
Restrict licensers on the use of Web page content
Conduct software license/assent checks before allowing software to be downloaded
Disclaim liability for errors
Maintain a privacy policy consistent with privacy regulations
Remind chat room users not to post obscene, defamatory or IP infringing materials
Avoid deceptive advertisements
Consider linking/framing agreements with parties whose Web pages you link to or frame
Exported software with strong encryption capabilities should conform to U.S. export restrictions
General corporate considerations
IP Acquisition
Maintain a system for identifying, maintaining and enforcing intellectual property rights
Obtain IP assignment agreements from all employees and consultants before they begin work
Record assignments of IP rights with the PTO or Copyright Office
Periodically check for infringement of your IP assets
Require a non-disclosure agreement before releasing beta versions of your software to the public or before testing new methods of doing business
File patent applications to protect your software, method of doing business, or other new inventions before publicizing or offering them to the public
If you plan to design around a patented product, seek infringement and validity opinions from patent counsel
Mark your products and literature with the relevant patent numbers
Know when maintenance fees are due
Trademarks
Conduct a trademark search before adopting a new mark or trade name
Register your trademark or servicemark with the PTO
Reserve rights to a new mark with an intent-to-use application
Properly mark references to your trademark or servicemark
Maintain quality control rights on licensees, distributors and dealers of your products
Consider using a trademark watch service to detect use and registration of similar marks
Monitor metatag and hidden code use in competitor’s Web sites for trademark infringement
Trade Secrets
Have a written employee policy relating to the proper handling of confidential information
Mark all confidential documents/items with a confidential notice
Restrict access to areas containing confidential documents or items
Have new employees sign a written acknow-ledgement that no prior employers’ trade secrets, copyrighted or patented technology will be used to develop your products or business processes
Have a standard nondisclosure agreement to accompany and disseminate source code or design
Copyrights
Place notices on each work
Seek copyright registration
Archive copies of each work
Obtain written assignments from vendors and independent contractors for copyrightable work
Register your site under the Digital Millennium Copyright Act to obtain a liability limitation against contributory infringement claims
Insurance
Purchase insurance to cover IP Risks
John Gartman and Kevin McNeely are attorneys with the technology and intellectual property firm Fish & Richardson P.C. Kevin can be reached for comments or questions at mcneely@fr.com, or visit the firm’s website at www.fr.com.
