The United States Patent and Trademark Office (USPTO) began implementing the Trademark Modernization Act of 2020 (TMA) on December 18, 2021. Why should you care? Well, if you’re a business, you should care about your brand, generally, and your mark is a visible reminder to the world of that brand: It is what separates your business from the rest of the pack. TMA makes taking care of that brand a lot easier – but it also presents potential new threats to current registrations.
It seems natural to expect that in exchange for an SBIR grant the government should gain something in return. Indeed, the government does gain rights in the innovations fostered through such a grant, but an SBIR effort is unlike a similar transaction in the commercial sector.
Don’t Let a Vaguely Defined Employment Relationship or a Weak IP Assignment Clause Lead You Into Litigation
A fact pattern we see all too often is a former employee claiming an ownership interest in or over software or intellectual property (IP) developed by or for a former employer. Typically, this occurs with the former employee attempting to exploit a real or perceived ambiguity in his or her employment relationship with the employer—i.e., ambiguity regarding the former employee’s status as either an employee or an independent contractor.
A recurring concern voiced by small or emerging companies working in the government marketplace is, “How do I effectively protect my IP when I’m forced to work with large prime contractors?” A threat is perceived that a prime contractor will take or steal the IP from a subcontractor (small company) to eliminate competition or capture leverage with the government and that the government turns a blind eye to such actions.
You have to know the rules to win the game, especially when the rules change… often. In 2013, the movie Captain Philips told the true story of the hijacking of the Maersk Alabama. In April 2009, the Maersk Alabama cargo ship was attacked and captured by four Somali pirates less than 300 nautical miles off the Coast of Somalia. The Maersk Alabama recognized the threat yet had little ability to repel the assault.
Every startup has an intellectual property (IP) strategy. For many, it may be as simple as, “I’ll worry about IP after the next funding round.” Whether articulated or not, a startup’s IP strategy says a great deal about how well its leadership is balancing the company’s short-term survival with long-term growth and success.