Client Alert: Protecting Intellectual Property in Remote-Based Work Settings

Shumaker, Loop & Kendrick, LLP
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Shumaker, Loop & Kendrick, LLP

During the COVID-19 pandemic, teleworking has become both a requirement and a preference to facilitate a safe and healthy workplace. However, remote-based work settings may pose intentional and unintentional threats to intellectual property (IP) and other proprietary information or technology. 

For example, work is increasingly conducted from home office spaces, wherein easier access to IP may be given to persons (i.e., family, residents, visitors, and others in close proximity) not privy to the IP. Virtual meetings may also increase the possibility of undesired exposure to data, ideas, creations, reports, and the like that are meant to remain secret. Maintaining secrecy is one of the core principals or requirements for various types and aspects of IP. Additionally, certain policies, urgent matters, or company routines pertaining to IP may be adhered to in a more lax manner. Therefore, the following practices are recommended to minimize theft of proprietary information and other IP-related issues resulting from an increase in remote work.

Identify Your Valuable IP

It is important to inventory and evaluate your IP not only to determine a monetary worth thereof, but also to determine what to protect, how to protect it, and from whom to protect it. Prioritizing your IP through an analysis, such as a risk-cost-benefit analysis, assists in determining the level of protection the IP demands. The four main types of IP are as follows:

PATENTS are new, non-obvious, and useful inventions such as machines, processes, consumer products, ornamental designs, or compositions of matter.

  • Examples: light bulb, process for assembling vehicles, ornamental design of a watch.

TRADEMARKS are brands and logos (i.e., words or designs), colors, and sounds to identify goods and services from a particular source. The symbols “TM” and “®” are typically associated with trademarks.

  • Examples: Apple® for smart devices, the “golden arches” for McDonald’s fast food restaurants, the color brown for UPS delivery services.

COPYRIGHTS are creative expressions of ideas in tangible form. 

  • Examples: software and codes, webpage or application, literature, videos, sculptures, paintings, pictures, music compositions.

TRADE SECRETS are any valuable information that gives you a competitive advantage that is maintained in secret.

  • Examples: formulas, recipes, processes, customer lists, algorithm for search engines, financial data, marketing plans, R&D materials.

Recognize the Threats

In remote-based work settings during a sudden onset of a pandemic, employees may be unsupervised, an urgency of work priorities may decrease, a free-flow of information is increased, and employer policies and training regarding IP may be neglected or rushed. The following is a list of key threats to IP rights:

  • Theft of IP by phishers and hackers taking advantage of the COVID-19 crisis at-home workers, especially those using personal devices and/or network connections that are not secure.
  • Inadvertent disclosure of secret information is easier with family, visitors, and the public at large, as well as through video conferencing and teleconferencing. For example, laptops may be unattended, printed documents are freely laid out in the open or lost, smart speakers such as Amazon’s Echo device, smart phones, or home security cameras may record conversations, visitors or the public may hear conversations either in the employee’s remote-based work space or the remote-based work space of those the employee is conferencing with, and IP, especially trade secrets, may not be properly designated, labeled, or electronically stored as confidential/proprietary.
  • Loss of IP ownership rights may increase if responsibilities of employees in remote-based work settings are not clearly defined. Employers generally own the IP created by its employees in the course and scope of their employment. Therefore, an employee could gain independent ownership of IP if the course and scope of employment is vaguely defined.
  • Limited resources, capabilities, and communication resulting from working remotely could lead to an inability to meet IP obligations. For example, difficulties may arise in maintaining IP license agreement provisions, failure in properly enforcing IP infringement matters, losing the ability to file and register IP and meet deadlines, and rushing IP R&D to meet the pandemic demands without focusing on IP terms may occur if communication and capabilities are reduced.
  • Not maintaining a brand’s positive image and ensuring continuous proper use of a trademark can occur.

Protecting Against the Threat

The following proactive measures can help reduce threats to IP in remote-based settings:

  • Educate employees working remotely on IP and the importance thereof.
  • Implement or revisit remote-based work policies/IP guidelines to ensure provisions for protection of IP in remote-based work settings. The provisions may include procedures for securing or accessing trade secret information, displaying trademarks, using copyrighted content, disclosing inventions, etc.
  • Ensure employees sign confidentiality/non-disclosure agreements. Remind employees they are prohibited from unauthorized transmission of company IP or proprietary information which includes transmission through personal email or instant messaging accounts, cloud accounts, file sharing, social media accounts, online video conferencing, etc.
  • Train and alert employees remotely working on IT security protocols. The IT security protocols may include recognizing phishing schemes, where and how proprietary information can be accessed and used, who can access and convey proprietary information, implementing safeguards such as password protection or encryption, using secure networks, and monitoring or tracking access of information or systems.
  • Maintain proprietary information on the network that is remotely accessible only when using an employer-controlled VPN, when reasonably possible.
  • Train and alert employees discussing confidential information through teleconferencing or video conferencing to consider turning off home device recorders and electronic assistants (i.e., Amazon’s Alexa) during conferences or working hours. Take steps to ensure that other persons do not have visual or audible access to the conference. Additionally, it may be helpful to instruct third parties participating in the conferences to keep information confidential as well.
  • For employees maintaining secret information at home, it should be encouraged to lock homes or minimize work to an area where only the employee has access. If not possible, limit access to confidential information to avoid misappropriation and protect secrecy (especially for trade secrets) by hiding or containing information in secured or locked locations. Label confidential and secret information as such. Minimize printing and hard copies as reasonably possible. Securely dispose of confidential information.
  • Designate a person responsible for answering questions regarding IP protection in remote –based work settings.
  • Issue company-owned laptops, electronic devices, telephones, or other electronic equipment, for remote workers, if feasible.
  • Ensure each employee’s “scope of employment” with respect to working remotely is clearly defined and extends to use of personal electronics and home equipment.
  • Maintain communication between employees working at home through regularly held remote meetings, calls, or correspondence. For example, the regularly held meetings assure IP filing deadlines are met, continuous and proper use of trademarks are met, IP agreements are being reviewed, invention disclosures are not occurring without protection, infringement issues are being monitored, and IP priority lists are created and attended to.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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