A Practitioner's Guide To Protecting Technology Assets

Article by John S. Paniaguas1 and Craig William Mandell2

Previously published in the DePaul Journal of Art, Technology & Intellectual Property Law


    There is arguably no more important asset for a company than its intellectual property. It is often the result of years of labor and millions, or even billions, of dollars in investments. It is also used to symbolize a company's reputation and good will in a market. The most recognized symbols, art, and characters in the world are often owned by some entity as intellectual property.

    Like any asset, intellectual property has to be managed properly for it to attain its full value. This is especially true in high-tech industries where poor management of intellectual property rights and technology assets can result in a decrease in efficiencies and quickly set a firm behind its competitors. This article will explain the basics behind the different intellectual property legal doctrines and demonstrate how technology firms can best use these doctrines to manage and protect their intellectual property.

    This article provides a brief introduction to Intellectual Property and how it can be used to strategically protect technology assets.

    One objective of this article is to provide the reader with a basic working knowledge of Intellectual Property law, both within and outside of the United States. Another objective of the article is to focus on using Intellectual Property to protect so called "high technology" assets. High technology assets primarily include electronic and computer related assets. Protection of business methods is also covered since business methods span the entire spectrum of technology, including high technology. Life sciences are intentionally left outside the scope this article.


    "Intellectual property" is a term used to identify and describe a group of interrelated legal doctrines that generally provide "authors" and "inventors" exclusive property rights over their "writings" and "discoveries."3 Intellectual Property protection may stem from various doctrines, such as federal and state laws concerning patents, copyrights, trademarks, unfair competition, trade secrets, or publicity rights. This section will briefly outline the purpose behind these doctrines and illustrate the differences between each of these doctrines.

    1. Policy Issues Behind Intellectual Property Rights and Protections

      In the United States, intellectual property laws are designed to promote and encourage a diverse, plentiful and competitive intellectual marketplace. All U.S. intellectual property laws are drafted with this general purpose in mind. Underlying this general utilitarian purpose are two seemingly contradictory sub-policies that lawmakers must balance when drafting and enforcing intellectual property laws.

      1. Expanding the Pie: Providing Incentives for Creativity

      Intellectual property laws seek to promote creativity by giving authors and inventors exclusive property rights in the useful, novel, or original works.4 Such property rights provide incentives to create by allowing authors and inventors to reap the benefits of their labor or investments. For example, pharmaceutical companies would have little incentive to invest time, labor and capital into researching and developing new drugs if they were not given the opportunity to recoup, and profit, from this investment. By allowing authors and inventors to reap the benefits of their creative investments, intellectual property law encourages ingenuity, which, in turn, results in a greater variety of products and services in the marketplace.5

      2. Promoting Competition

      Intellectual property laws also are drafted in accordance with the laisse-faire policy of enlarging public access to new products and services.6 It may seem counterintuitive to promote competition by granting monopoly rights to authors and inventors, but such monopoly rights are typically temporary and provided in a manner that promotes public access to the protected property.

      For example, U.S. patent laws only offer protection to works for twenty years after their filing date – i.e., the date the patent application is filed with the United States Patent And Trademark Office.7 After this twenty-year term, the invention enters the public domain: at this point, each member of the public is free to reproduce and use the product. Likewise, exclusive patent protections are only granted if the inventor agrees to publish the product's primary purpose, how it is used, and how it is created.8 In this way, competitors can study the new product so that they are able to (1) create a new and improved version, or (2) reproduce the product once it enters the public domain.

      Intellectual property law – and in particular trademark and unfair competition law – also promotes competition by allowing companies to generate public goodwill and preventing competitors from getting ahead by using unethical business tactics. For example, trademark law grants companies exclusive rights to those symbols and indicia that signal what products are made by that company. On this basis, trademark law makes it easier for consumers to distinguish between similar products. This encourages companies to put forth the best possible product; otherwise, consumers may associate that company's trademark with another company's inferior goods or services.

    2. Sources of Regulation for Intellectual Property

      1. Federal Powers

      Congress draws its power to create and enforce Federal copyright and patent laws from Article 1, § 8 of the U.S. Constitution.9 Meanwhile, Congress draws its power to create and enforce trademark and unfair competition laws from the Commerce Clause which gives Congress broad authority to regulate interstate commerce.10

      2. State Powers

      States are also given authority to pass intellectual property regulations under the Tenth Amendment of the U.S. Constitution, which sets forth that "[t]he powers not delegated to the United States by the Constitution, nor prohibited by it to the States, are reserved to the States . . . ."11 As such, the states are free to provide Intellectual Property protections if they do not conflict with federal Intellectual Property regulations. All state intellectual property laws that directly conflict with federal intellectual property regulations are "prohibited" and, therefore...

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