1. What Records Establish the IP Rights a Business Can Claim?
Distinguish assets created, acquired, and used under license. Match each to its creator, present rights holder, and documented use.
| Business asset | Potential protection | Records to examine |
|---|---|---|
| Technical invention | Patent | Inventor contributions, design notes, disclosure dates |
| Product name or logo | Trademark | Labels, dated sales pages, first-use evidence |
| Software code or artwork | Copyright | Source files, authorship, transfers |
| Confidential process | Trade secret | Access permissions, secrecy agreements |
Technical invention
- Potential protectionPatent
- Records to examineInventor contributions, design notes, disclosure dates
Product name or logo
- Potential protectionTrademark
- Records to examineLabels, dated sales pages, first-use evidence
Software code or artwork
- Potential protectionCopyright
- Records to examineSource files, authorship, transfers
Confidential process
- Potential protectionTrade secret
- Records to examineAccess permissions, secrecy agreements
Separate a Product's Function from Its Expression
Software may contain copyrightable code, a patent-eligible invention, and a trademark identifying its source. Copyright does not extend to methods or systems. Product appearance may warrant separate design-patent analysis. An intellectual property review should identify the feature covered by each right.
Trace Ownership from the Creator to the Company
Patent inventorship follows contributions to the claimed invention, not job titles. Payroll records do not establish company ownership. Examine signed assignments and joint-development agreements. Without contrary agreements, joint patent owners may have independent rights to license their interests, which can complicate exclusivity. Copyright has separate rules. Employee work within the scope of employment may be made for hire. Commissioned work requires a statutory category and signed agreement; other transfers generally require a signed writing under 17 U.S.C. § 204. Receiving finished files does not transfer copyright. A supplier may grant only an internal-use license, leaving redistribution rights with the original developer.
2. Which Events Can Affect an IP Filing?
Earlier demonstrations, sales, and publications may change filing options. Preserve the underlying dates and circumstances.
Patent Disclosure and the Provisional Filing Deadline
Utility patents require eligible subject matter, novelty, nonobviousness, and adequate disclosure under 35 U.S.C. §§ 101–103 and 112. Certain inventor-originated disclosures qualify for a limited one-year U.S. exception, but foreign rules differ. Record what the public could access and when. A confidential investor presentation may present different disclosure issues from an unrestricted demonstration; preserve the slides and confidentiality terms. An invention disclosure is not an application. A corresponding nonprovisional filing generally must follow a U.S. provisional within 12 months to claim its benefit, subject to limited exceptions. Earlier priority covers only adequately supported subject matter.
Trademark Distinctiveness and Commercial Evidence
A mark must identify commercial source. Descriptive wording may need acquired distinctiveness; similar earlier marks may cause confusion. Check registered and unregistered rights, not just domain availability. Federal filings often rely on use in commerce or bona fide intent to use. Intent-to-use applicants generally must prove use before registration. Specimens must show genuine use with the listed goods or services, not staged images. Advertising alone generally does not qualify for goods, although it may qualify for services when the mark identifies their source.
Copyright Fixation and Registration Timing
Copyright generally arises upon fixation of original expression under 17 U.S.C. § 102; ideas and systems remain outside its scope. For U.S. works, registration or refusal generally precedes an infringement suit, subject to § 411 exceptions. Under § 412, registration timing may restrict statutory damages and attorney's fees, including for infringement beginning before registration. A three-month post-publication exception and other exceptions apply. Preserve publication dates and versions before Copyright Office filing.
3. When Does Secrecy Offer a Different Protection Route?
Confidential technical information may retain value if secrecy is realistic and documented.
Compare Patent Disclosure with Trade Secret Risks
Patents grant time-limited exclusionary rights for adequate disclosure. Trade secrets may endure while secret, but competitors may lawfully reverse engineer or independently develop them. A hidden manufacturing method is different from a mechanism visible in a sold device.
Apply Federal and New York Standards Separately
Under 18 U.S.C. § 1839, qualifying information derives economic value from not being generally known or readily ascertainable through proper means. The owner must take reasonable secrecy measures. A § 1836 private claim also requires that the secret relate to a product or service used, or intended for use, in interstate or foreign commerce. New York common law weighs knowledge inside and outside the business, commercial value, safeguards, development efforts, and lawful accessibility. An NDA cannot make public information secret. Access logs and vendor approvals show whether confidentiality procedures were followed.
4. What Must Be Checked before Granting an IP License?
Earlier contracts can limit what a company may license, even for products it developed.
Identify the Rights Transferred or Licensed
Assignments transfer ownership interests; licenses authorize defined uses. Exclusive copyright licenses can constitute ownership transfers. A technology licensing agreement should specify assets, territory, field, duration, exclusivity, sublicensing, improvements, and termination. Earlier grants may bar later exclusivity. Trademark licenses also require attention to quality control over licensed goods or services.
Separate Ownership from Freedom to Operate
A patent gives a right to exclude, not permission to manufacture. Another patent may cover a necessary component. Third-party software licenses can impose attribution, redistribution, or source-code obligations. A transaction schedule should distinguish pending applications from registered rights and identify existing grants or security interests.
5. Frequently Asked Questions
Can You Patent an Idea Without a Prototype?
A prototype is not always necessary, but a bare idea is insufficient. The application must describe and enable an invention under 35 U.S.C. § 112, alongside other patentability requirements. Examination focuses on the technical disclosure rather than the existence of a working model.
How Long Does a Federal Trademark Registration Last?
For most registrations outside the Madrid Protocol, a Section 8 use or excusable-nonuse declaration is due during years five to six. Sections 8 and 9 follow in years nine to ten and each later ten-year interval. A six-month grace period carries an additional fee. Without the required filings, registration can lapse.
6. When Should an IP Attorney Review a Company's Records?
Before financing or an exclusive license, an intellectual property attorney can examine disputed assignments and earlier grants. The resulting findings can distinguish missing paperwork from rights the company cannot lawfully transfer.
27 Apr, 2026
