Investments enable companies to expand, hire new talent, build new production lines, establish fresh distribution channels, conduct more research and development and pursue other opportunities too numerous to list. There is no surprise that investors look at these opportunities as a means to gain a return on their outlay. Companies spend hours networking and polishing a pitch to achieve a nod from an individual or firm that their idea is worth the risk.
Steve Jobs, Elon Musk, Jeff Bezos. Popular culture likes to cultivate the myth of the maverick entrepreneur, often attributing the innovation in a company to a lone genius. The reality is that innovative companies cannot and should not rely on singular flashes of genius, but instead should build a culture of innovation from the ground up.
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.