In-House Counsel and IP Patent Protection

Many companies, whether they specialize in intellectual property or only think about the occasional trademark or copyright seldom think in terms of leveraging their IP into part of the company’s income portfolio. Part of this is language: using trademarks for income is “branding” rather than IP and that’s the marketing department’s job. But some of it is failing to think creatively. There is still a tendency to think of “intellectual property” as either “programming” or “patents” in the narrow sense of “a patent for a particular item” and not as a method of defense or profit.

In-house counsel is uniquely suited to step in and help management and staff break out of the creative deadlock and view IP as an integral part of the business. Not just something that is developed in R&D, but something that everyone in all departments handles and needs to protect.

IP Protective Services: Beginning With Management

Small businesses and startups often outsource their patent and IP legal issues to outside law firms. Intellectual property law is a wide and growing area of law[1] covering trademarks, copyrights, patents, and trade secrets. Filing patents and trademarks for inclusion in the U.S. Patent and Trademark Office (USPTO)[2] is a legally exacting job, and businesses feel more comfortable leaving it to the professionals.

An in-house IP attorney needs to begin by explaining to the C-suite that they now have a professional ready to hand. Explain that besides patents on inventions and innovations made by the company, there are also other essential properties that the company needs to protect under the umbrella of “intellectual property”:

  • URLs for company websites, social media, and intranet pages. URLs may be part of the IP, especially if a trademark or copyrighted name is used in the address. (For every argument that URLs and domain names are patentable, there is one that says they are not. Caveat emptor.)
  • Datasets can be considered intellectual property. Data itself is not, but a company’s assembly of material can be.
  • Intangible sequences such as music, computer code, and online content may be intellectual property.

The best way to begin protecting your possible suite of IP material is to treat all company creations as if they are intellectual property. This starts with creating and maintaining an IP-conscious culture within the company.

IP Protective Services: Audit the Actual IP

Once management understands the need for IP awareness, it can be disseminated to the rest of the company. In-house counsel should review all properties that are already patented or copyrighted, those that are under development, and any that are under license. Confirm if any licensed properties are properly licensed and if not, whether the licensing agreement should be updated or canceled.

IP Protective Services: Upgrade Non-Disclosure Agreements

Not all IP material must immediately be patented or trademarked. Trade secrets and company-use-only material can easily be protected with robust non-disclosure agreements. Datasets and similar material should be marked proprietary and confidential.

The audit and review should assess what IP contributes most to the company’s revenue and what is most critical to the company’s goals and objectives. For instance, Coca-Cola’s trademarks are critical to their corporate identity, but perhaps less critical to the company than the “secret formula” to the soft drink itself, because of the worldwide name brand recognition. On the other hand, a smaller company might place equal weight on its logo and on its pharmaceutical development, since it lacks the name recognition of a multinational conglomerate.

In-House Counsel and IP Infringement

Patent infringement is sometimes a catch-all term for the various types of IP infringement: trademark, copyright, and patent. Theft of trade secrets and industrial espionage are federal crimes (18 U.S. Code § 1832)[3].

  • Patent infringement occurs when a legally patented item is used by another company without permission or without a licensing agreement. When a patented item is sold by a third party it is sold “under license,” such as NFL products.
  • Copyright infringement includes movie and video game piracy as well as unauthorized parodies and quotations other than “fair use” in reviews. Copyright infringement can also include using music for background in public events without permission from the writer or publisher.
  • Trademark infringement means using a licensed mark or one resembling the licensed mark. “Knockoff” toy and clothing brands are notorious for this type of infringement.

Many cases of IP infringement are inadvertent. In the freewheeling social media world, people may not be aware of the strict patent and copyright laws or think that the FBI warning against showing a movie to their friends online is just a suggestion. These cases can be easily handled in the courts.

More serious are situations where two companies have dueling patents: perhaps the patents resemble each other or use the same process to achieve virtually identical results. In this case, the in-house counsel should prepare for a long battle.

Derivative Patents and Picket Fences

When two patents are filed at the almost the same time, whichever one is stamped first wins, thanks to the America Invents Act (AIA) (35 U.S.C. 282(a)(3). Now, rather than a lengthy interference trial, parties engage in a less-lengthy derivation hearing. The claimant must show that the patent-holder “derived the claimed invention” from an inventor in the claimant’s application. A claimant has only one year from the date of the patent to file their claim.

The Patent Trial and Appeal Board (PTAB) wants to see evidence of prior conception by the claimant and communication from the claimant to the patent-holder. Many claims are denied by PTAB because the claimant cannot prove both prongs of the claim. The claimant can often prove they conceived the idea earlier but showing that the earlier filer knew of it is more problematic.[4]

Part of the purpose of the AIA was acknowledgement that two or more inventors can follow the same reasoning process and arrive at the same result at almost the same time. Additionally, challenges by patent trolls (“patent assertion entities” or PAEs), individuals who collect unused patents then sue new patent-holders for “infringing” on old inventions, were stifling innovation among small software creators who feared receiving demand letters related to code strings in their new programs.[5]

In-house counsel can plan ahead for both these problems by developing tracking systems for all intellectual property, regardless of who develops it or what stage of development it is in. Every department should have robust non-disclosure agreements and they should be reviewed and revised whenever anyone enters or leaves the company.

The ”picket fence” strategy for protecting a core technology has become popular among IP companies. It can be initially expensive, but less costly than the risk of an infringement or derivative suit later. Once the core technology has been patented, a “fence” of related patents is acquired, shutting off any claims of infringement. This requires some flexibility from the development team and cooperation from upper management, but it protects the core tech from derivative attacks.[6]

Final Considerations: Is it Worth the Lawsuit?

If a company patent is infringed, the board or C-Suite may charge into the in-house counsel’s office, demanding legal action. The first question a good in-house counsel must ask is whether the cost is worth the reward.

Stories abound about Coca-Cola or the Walt Disney Company crushing mom-and-pop businesses for using their logos, but in reality, big corporations generally try polite persuasion to make people stop using their trademarks before resorting to litigation.[7]

Smaller companies with fewer resources should consider if the time and expense of litigation are worth taking an infringer to court, when a cease-and-desist letter or booking a few hours with a mediator might accomplish the same result. Calm and reasonable in-house counsel can sometimes convince opposing attorneys that cooperating and signing a licensing agreement will solve everyone’s problems better than a few years trading discovery documents.

Not always. If the demand letter comes from a patent troll, standing firm may be the company’s best defense. Ferocious online tech retailer Newegg refused to cave to the patent assertion entity Soverain and changed much of the IP legal world.[8] But not forever. Tech companies and their in-house counsel will always need to be alert for the next legal action, and for infringement on their own behalf.


In-house IP counsel must be prepared to think outside the box in places where management and staff do not. It’s easy to get stuck in a place where “IP” is computers and “patents” are completed projects ready for filing. Then a letter arrives demanding settlement for a long-forgotten patent or licensing agreement, or someone spots a logo on an Instagram reel that looks suspiciously similar to the company’s new branding concept that won’t be released until next year.

In-house counsel is there to be on top of the intellectual property that is still in production, non-disclosure agreements, and trade secrets, including customer lists and data files. Forethought and planning help keep one hand on the property and one on the controller in the IP game.