Protecting Your Software Intellectual Property

You would not drive your brand new car without carrying valid car insurance; so why would you spend countless hours designing and developing software algorithms and source code without obtaining the proper protections afforded by intellectual property law?

A business that relies on intellectual property is at great risk of financial ruin without proper legal counsel. Intellectual property is an umbrella term for complex subcategories, including patents, trademarks, copyrights, and trade secrets, each of which has its legal advantages and disadvantages. The seasoned attorneys at Parsus LLP can determine which legal protections and strategies that your company should pursue. Parsus attorneys, who are located near the Silicon Beach region, understand the needs of software development companies, from startups to more established companies, and appreciate that intellectual property is the lifeblood of companies.

Utility Patents:

            Software development companies that create useful, novel, and non-obvious products and processes should file for utility patents. As a general matter, a patent provides inventors with the exclusive rights to their patented inventions to ensure that the inventor can recoup his investment in and benefit from such patent with reduced competition. Novelty and non-obviousness are central to obtaining a patent under federal law but are difficult to define and even more challenging to demonstrate in a tangible manner. Thus, with the skill of a Parsus attorney, an abstract idea such as a mathematical algorithm can be turned into a utility patent-eligible application. As of March 16, 2013, federal law created a first-inventor-to-file system where a patent to an invention is granted to the first inventor to file an application. Thus, consulting an attorney as soon as possible in this race-to-the-moon development process will better protect your company’s investments before competitors can undermine them.

Trademarks:

            Asoftware development company may find it crucial to apply for a trademark, including its Internet domain name. Trademarks are used to identify and distinguish the particular source or origin of goods and services in a relevant marketplace. If a company has a trademark on a domain name, it can seek recourse from parties whose domain name infringes their trademark. Seeking the skill of counsel is crucial because applications for federal trademark registrations can be filed on two bases: 1) actual use of the trademark in commerce or 2) a bona fide intent to use the trademark in connection with the goods or services even though actual use has not yet taken place. As there are various ways to maintain the validity of a trademark (using the trademark continuously for at least 5 years or renewing the registration every 10 years), Parsus attorneys can help you determine the best strategy to approach registering a trademark.

Copyrights:

            A software development company particularly requires the experience of an attorney before relying on a copyright. Once the author of an original expression of ideas (e.g. computer software code either in source code or object code) publishes that expression of ideas in a fixed medium, the author automatically becomes the owner of the copyright. Although a copyright does not have to be registered nor published to be valid, there are several major issues that must be resolved. First, copyrights only protect the original expressions of ideas from unauthorized copying, not the ideas or concepts being expressed (but a patent or a trade secret may protect such ideas or concepts). Second, employers must ensure that any computer programs, created by their employees or any outside contractors, are “work made for hire.” This means that the copyright ownership vests with the company, not with the employee or contractor. Lastly, a company may not want to register its copyright: registration requires a deposit of source code with limitations on the owner’s ability to block out portions containing trade secrets. Thus, a Parsus attorney can walk you throughthe benefits and pitfalls of whether an unregistered or registered copyright,or one in conjunction with a patent, will provide sufficient protection.

Trade Secrets:

            Unlike the aforementioned types of intellectual property protections, there is no official registration process for trade secrets. Relying on trade secrets can be risky business without the guidance of an attorney. Trade secrets are secured and maintained solely by the owner, who must take reasonable steps to preserve the secrecy of the information. This means that companies, as employers, mustensure that their employees and independent contractors, along with any thirdparties that have a need to use or review the information, have signed theappropriate nondisclosure and confidentiality agreements. Trade secrets are a double-edged sword for computer source code. Although computer source code canbe protected as a trade secret, it can also be protected by copyright and embody a patentable invention. But the trade secret may be lost if a public disclosure of source code is made in connection with the registration of the copyright. The trade secret may also be lost upon the issuance of a patent on the software program. Given the intricacies of each type of intellectual property protection and their propensity to overlap, Parsus attorneys can assist in determining the most effective method of protecting your company’s intellectual property assets.

Technology Licensing and NondisclosureAgreements:

Once you have obtained a patent or trademark for products such as software algorithms and source code, you have the ability to license your product to others, whether on an exclusive or non-exclusive basis. As the major asset of software development companies is their confidential information, an attorney is necessary to ensure that the company’s intellectual property is protected from copycats and theft. A Parsus attorney can ensure that all your employees, independent contractors, prospective buyers, and anyone else with access to your intellectual property have signed iron-clad confidentiality agreements, in addition to drafting internal information technology (IT) and communications systems policies that govern the use of such confidential information. In fact, Parsus attorneys can serve as in-house counsel to your company, working closely with your IT department to ensure there is a uniform, companywide information management and protection program.

Contact Parsus LLPtoday for a consultation regarding your intellectual property needs at https://parsuslaw.com/contact/.

Legal Disclaimer: The  information in this article is provided for general informational and educational purposes only.  It is not intended to belegal advice and does not create an attorney-client relationship.