Get smart! About intellectual property.

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Over the past 50 years, there has been a meteoric rise in claims to intellectual property around the globe. In fact, intellectual property has in many ways become the foundation of some economies. Since the existence of and rights surrounding intellectual property are realized only through complete and exacting documentation, records and information managers must assume important and expanded responsibilities in the management and protection of intellectual property. This article focuses on the principal types of intellectual property: patents, trademarks, copyrights, publicity rights, and trade secrets. In addition to a discussion of the nature and structure of each of these types of intellectual property, important international issues, responsibilities, and tasks for the records and information management (RIM) professional will be addressed.

Intellectual Property

The ownership of the expression of ideas, which is at the core of the concept of intellectual property, came late in the development of Western civilization. Most Western philosophers, including Jeremy Bentham and Thomas Hobbes, focused on the ownership of physical property in their discussions of utilitarianism and politics. Until the 17th century, there were no legal protections even for inventions that had a physical component (e.g., textile loom, typewriter, sewing machine, etc.); and it was not until the mid-19th century that these protections were extended to items without a physical component (e.g., commercial processes, medical procedures).

As the legal structure surrounding intellectual property developed, each nation determined the granting of specific types of monopoly to creators or owners. As the global economy developed, harmonization of the various approaches to intellectual property became necessary. Out of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) negotiations in 1994 emerged the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which lays out a set of minimum standards for all the members of the World Trade Organization (WTO) to adopt. The TRIPS agreement is only the beginning. Many practical and concrete outcomes from TRIPS still need to be resolved (e.g., the availability of patented AIDS drugs in developing countries). Efforts to continue the harmonization of intellectual property law continues today through the World Intellectual Property Organization (WIPO), the current successor to the United International Bureaux for the Protection of Intellectual Property founded in 1893.

For the RIM professional, the key element is the recognition that intellectual property is an important asset, not just a collection of information artifacts. The monopoly granted by government to the inventor or owner of a specific piece of intellectual property permits the creation of substantial, protected income (whether the owner/inventor is an independent person, part of a commercial enterprise, an educational entity, or a not-for-profit). Because of the inherent value of the documentation that permits the granting of the monopoly, RIM professionals must view it as a vital record and take a value-based approach to the collection, organization, and preservation of the information resources.

In particular, the approach to the maintenance of intellectual property documentation requires, above all, defined structure and clarity. During the creation and application phases of the process granting an intellectual property monopoly, the RIM professional can augment the process by helping staff to identify all the required documentation, creating dear and comprehensive classifications to organize the material, assuring the proper preservation of the documentation (especially those components that are digital), and providing appropriate vital-record protection.

Patents

Patent law protects inventions that are original and not obvious by granting a monopoly to the inventor for a stated period of time (e.g., in United States and the European Union, the grant is for a period of 20 years). Patents were first granted by medieval kings for property or certain economic rights (e.g., the right to create or to sell a specific cloth). The British passed the first patent law, called the Monopoly Act in 1624; the first U.S. patent law was passed in 1790. Until recently, patents were linked to physical products ("inventions") that had a tangible aspect. U.S. law was changed in the 1950s, however, to permit the patenting of processes. However, until 1998, few, if any, claims of patents for processes were filed. Today, in all of the major developed countries, patents can be granted both for physical inventions and for processes with no physical component. In addition to specific industrial designs, patents are granted for plants, surgical procedures, software algorithms, and genetic modifications.

In addition to the originality and inventiveness of the item or the process that is being patented, the firing date of the patent application can be crucial. If several inventors are working on the same item or process, the first to file a complete application with the patent office has the presumed strongest argument to be granted the patent. One limitation to the granting of a patent is the concept known as "prior art." If it can be demonstrated that the claims in the patent application are either commonly known or have been described before in other patent applications, the patent will not be granted, or a previously granted patent may be revoked.

The importance of patents has been recognized in all legal systems, and the global nature of the current economy has encouraged continued harmonization of the various national patent laws. In 2000, the Patent Law Treaty was adopted in Geneva to provide a framework for consistency in the administration of patents among various nations. Two of the key elements in the treaty deal with the issue of the application date (establishing the priority of the inventor) and the effect of revocation in the case of "prior art" Each of the nations that have signed on as a party to the treaty must adjust their legislation to reflect its stipulations.

Perhaps the most significant element in the treaty is the move from "invention date" to "application date" as the determining factor in assigning ultimate ownership of patents. Before TRIPS, it was important for an inventor to document exactly when the invention was first created. Thus, if two inventors created the same invention, but one created it one day before the other, that inventor would be granted the patent if the application documentation showed that the invention was indeed created on that prior date. After TRIPS, the most important event is the date when the application is submitted to a patent office. Even if another inventor created the same invention months or years prior, the grant to the patent would go to the inventor that first applied for a patent. To align the U.S. legislation with this treaty provision, the Patent Act of 2005 was introduced and is under consideration by Congress.

For RIM professionals, the key task is to gather and to preserve all of the key documentation that contributes to the proof of the uniqueness and newness of the invention. However, because the application date is now the determining factor, the need to document exactly when the invention was created has been removed. More important will be the ability to provide those submitting the application for patent with complete, fully classified documentation about the invention and to preserve that information so that it can serve as a defense if the patent is challenged. Finally, the RIM professional may be required to maintain documentation for patent applications and grants from multiple countries for the same invention and monitor the status and progress of those applications. For all these tasks, close cooperation with those responsible for preparing patent applications or defending challenged patents is essential.

Trademarks

A trademark is a specific identifier that a manufacturer or creator uses to distinguish a specific item, group of items, or even services (i.e., service marks). The granting of trademarks first appeared in United States in the 1870s. At first restricted only to items that actually included the manufacturer's name, the granting of trademarks has expanded dramatically to include arbitrary names, symbols, and the names of newspapers, hotels, and other businesses. In addition, trademarks can be used to protect "trade dress," (i.e., the packaging, form, or color palette associated with the item). Unlike patents and copyrights, a trademark has no time limit unless the owner abandons the mark.

The legal protection for trademarks has expanded from the original focus that prevented others using an identical mark to a broader prevention of other marks that would tarnish, blur, or dilute the value of the original mark. The international development of trademark law has centered on the mutual recognition of a trademark in multiple countries simultaneously. First established in 1891 under the Madrid Agreement, today simultaneous international registration is administered by WIPO under the Madrid Protocol (1989). A trademark owner protects a mark among members of the Madrid Union by filing one application with a national trademark office. Subsequently, it is possible to record changes or to renew the registration through a procedure.

Trademarks can be lost if they are not protected. The terms, "cola," and "elevator," were once trademarks or integral parts of trademarks and, thus, could not be used by others to identify their products. Over time, however, it was determined by the courts that the owners of the trademarks had not sufficiently protected these terms; they then passed into the public domain. Trademarks can also be abandoned through inactivity. If it can be demonstrated that a trademark has not been used for a significant period of time, a nation may choose not to permit the owner to protect it.

The RIM professional, as in all intellectual property cases, has the responsibility to ensure the identification and collection of the documentation used to substantiate the trademark. Among them are documentation of the intention to use the trademark, the record of the first use of the trademark (frequently accomplished through the preservation of the first invoice using that trademark), and ongoing documentation for the continuous use of the trademark within the country. To protect a trademark internationally, it must be registered in each country where the owner wants to protect it. The RIM professional assists this process by ensuring protection and preservation of the trademark registration and documentation of continuous use.

Copyrights

Copyright is a monopoly or form of protection provided to the author of "original works of authorship." These works may be literary, dramatic, musical, or artistic in form. Significantly, this protection is available to both published and unpublished works. In fact, copyright protection exists from the moment a work is in its final form and belongs to the author unless the copyright has been contractually transferred to another party. U.S. and international copyright laws give the copyright owner the exclusive right to authorize others to reproduce, to distribute, or to sell copies of the work, to prepare derivative works, or to perform or to display the work publicly.

In the United States, copyright protection began in 1790 with an initial term of 14 years and a single renewal of 14 years. In 1998, the Digital Millennium Copyright Act (DMCA) was signed into law for the United States. It implements two WIPO treaties: the 1996 Geneva Treaties on Copyright and Performances and Phonograms. The provisions of the DMCA have been controversial because of the amount of time granted to protect various types of works--up to 120 years in specific cases. The European Union, on the other hand, has chosen to set the limit for a copyright to 70 years after the death of the author or 70 years after the work was made available publicly. In either case, there is no provision for renewal of the copyright once the term has been reached.

The granting of copyrights began in a paper-based world. The advent of digital technology, however, has added significant dimensions to the issues surrounding copyright. For example, when The New Yorker planned to publish a set of DVDs containing all the previously. published works in the magazine--and the means to search the DVDs--it encountered a significant problem. The authors of many of the earlier works--even though they made them as "works for hire" with the copyright assigned to The New Yorker--argued that they had transferred the copyright only for the original paper publication in The New Yorker. The courts held that a fully indexed and searchable set of DVDs constituted a new work and would require a new assignment of copyright. Therefore, the original plans had to be scrapped, and the DVDs were issued with only the images of the magazine's original pages and no capability to search them.

For the RIM professional, the obvious tasks include preserving the original work and its creation or publication date, the contractual documents assigning the copyright, and any formal governmental registrations. In addition, it is often the practice to maintain in the same file permissions to reproduce the work or to quote selected, extended passages from the work (e.g., uses of text in academic publications).

However, protection of one's own copyrights is not the only task for the RIM professional. There is also an ethical obligation to protect others' copyrights. Thus, instances of inappropriate copying of copyrighted materials must be reported to the appropriate function to protect the organization from litigation or penalties. This obligation is newly incorporated into the RIM profession's Code of Professional Responsibility.

Trade Secrets

Trade secrets are information that is not publicly disclosed, that is valuable, and that provides economic advantage to a business or other enterprise because it is not publicly known. Probably the most famous trade secret is the formula for Coca-Cola[TM] syrup. Trade secrets are quite different from patents and copyrights. Patents and trade secrets are mutually exclusive. A patent, once issued, is published; by definition, nothing in it can be a trade secret. Until a patent is issued, the Patent and Trademark Office protects the information in the patent application in accord with trade-secret law.

However, some items may be protected by both copyright and trade secret. If some information can not be protected under copyright law, it is possible to protect it through trade secret law by removing that information from the copyright application. A good example would be a software application that provides sophisticated tracking capabilities for the movement of the stock market. The application is copyrighted upon creation and should be registered. However, the algorithm in the application for evaluating the movement of the markets could be withheld and protected as a trade secret.

The nature of a trade secret requires that the owner protect the information from disclosure. There is no registration or application to obtain trade secret protection. However, there are laws that allow the owner of a trade secret to sue for damages if the trade secret is disclosed or stolen.

For the RIM professional, the overriding task is straightforward: protect the information from disclosure through appropriate vaulting or, in the case of digital data, encryption. In the case of trade secrets, the issue of access to the information is paramount. In other cases of intellectual property protection--where the information is publicly known--preservation, rather than access, is the major concern. Trade secrets demand both the accurate preservation of the information and the assurance that access to the information can be gained only by those who have the authority to view and to use it.

Publicity Rights

The newest area of intellectual property arose from an article published in 1954 that proposed that public figures have the right to profit from their public recognition. As it has been implemented in law and by the courts in the intervening years, the key elements have been the prevention of others from depicting famous persons or using them as an endorsement without compensation. One famous case prevented the sale of the "Here's Johnny Portable Toilet" because the use of the well-known phrase used to introduce Johnny Carson to his television audience falsely implied Carson's endorsement.

This area of intellectual property probably has little impact on most RIM professionals. For those working in organizations with significant public figures, the task may entail being aware of the range of inappropriate use of the person's image or endorsement so that violations might be addressed promptly.

Digital Preservation

One area of growing concern for all RIM professionals is digital preservation. The expanding practice of digital document management creates a challenge to ensure that documents maintained and indexed digitally will be able to be accessed as operating systems and applications migrate. Although the technical issues surrounding digital preservation can be complex, several simple principles can provide overall guidance.

* Documents relating to the creation, ownership, or management of intellectual property, whether scanned or created natively from applications such as Microsoft Word[TM], should be preserved as fully indexed PDF/A objects. A new international standard, ISO 19005-1. Document management--Electronic document file format for long-term preservation--Part h Use of PDF (PDF/A), details the specifications for long-term preservation of electronic documents that contain character, raster, and vector data. (This standard is available for purchase at www.ansi.org.) PDF/A files are device-independent, contributing to their ability to preserve content and visual appearance over an extended period of time.

* Computer applications, spreadsheets, and databases require special attention to ensure that they are both retrievable and operable should it become necessary to defend them as intellectual property. The overall approach is detailed in a presentation given at the 1996 DLM Forum on Electronic Records called "Digital Retention Evaluation Methodology," but it can be summarized as the designing of a preservation approach, one that includes not only the data but also the documentation and any required operating systems or applications. If the intellectual property is maintained separate from live systems (e.g., on tape or optical disk), then issues of media stability standards must be addressed. Several sources exist that can help RIM professionals determine the stability standards.

* Digital signatures can be an appropriate tool to document the creation date of works that will be considered as intellectual property. If stored in a document management system along with the original work, the digital signatures can be produced as evidence that work was in existence at a specific time on a specific date.

* Finally, the use of encryption should be mandatory for all trade secrets that are maintained in digital form. Encryption ensures that information is not readily available for disclosure to the public and permits access only to those who have the permission to possess the key to the encryption.

Increasingly, organizations will depend upon their intellectual property for a significant portion of their economic value. As members of a team that would include IT specialists and corporate counsel, RIM professionals will be continually challenged to manage and to preserve the information that documents the ownership and use of intellectual property. This will require clear and complete documentation of each intellectual property, appropriate vital records protection, and the provision of controlled access where the intellectual property or information about it should not be disclosed. Above all, the RIM professional needs to monitor developments and changes in intellectual property statutes and regulations both domestically and internationally to ensure that records management procedures reflect retention requirements and ensure that the required content is being preserved in a structured fashion.

At the Core

This article

* Highlights the advent of the concept of intellectual property

* Describes the different forms of intellectual property and the RIM manager's role in preserving records for that form

* Explains the importance of digital preservation

References

Andolsen, Alan A. "Digital Retention Evaluation Methodology." Proceedings of the DLM-Forum on Electronic Records, Brussels: 18-20 December 1996. Luxembourg: Office for Official Publications of the European Communities, 1997.

ARMA International. "Code of Professional Responsibility," 1995. www.arma.org/ about/overview/ethics.cfm (accessed 21 November 2005).

Byers, Fred R., Care and Handling of CDs and DVDs [NIST 500-252]. Washington, DC: National Institute of Standards and Technology, 2003.

European Patent Office. www.european-patent-office.org/legal/epc/e/contents.html (accessed 21 November 2005).

Hirtle, Peter B. "Copyright Term and the Public Domain in the United States," 1 January 2005. www.copyright.cornell.edu/training/Hirtle_Public_Domain.htm (accessed 21 November 2005).

Geller, Sidney B. Care and Handling of Computer Magnetic Storage Media [NBS 500-101]. Washington, DC: National Bureau of Standards, 1983.

Nimmer, Melville B. "The Right of Publicity." Law and Contemporary Problems, 19 (1954).

United States Patent and Trademark Office. "Patents." www.uspto.gov/main/patents.htm (accessed 21 November 2005).

World Intellectual Property Organization. "WIPO Treaties--General Information, Major Events 1883-2002." www.wipo.int/treaties/en/general (accessed 21 November 2005).

Alan Andolsen, CRM

Alan A. Andolsen, CRM, is president of Naremco Services Inc., a management consulting l firm founded in 1948 by Emmett Leahy that offers information and records management consulting services. He may be contacted at AlAndolsen@Naremco.com.