Protecting Your Intellectual Property When Responding to RFPs
By Barbara I. Berschler, Esquire

When you prepare a response to government or commercial proposal for a project, in addition to following the requirements of the RFP, you need a clear understanding of what elements of your proposal are considered intellectual property. So, what exactly is intellectual property?

It is a form of property that grows out of the creations of the human mind. Unlike real estate or personal property, it is intangible. Various bodies of law have been developed over the course of centuries to recognize and protect the valuable creations that are generally referred to as intellectual property. The laws most frequently referred to come under the headings of copyright, trademarks and patents. But there are other forms that are important to businesses and those mainly fall under the category of trade secrets. When developing your response to any RFP, it is critical for you to know if you own or have the legal right to use the intellectual property to be incorporated in your presentation.

We begin with examining what makes up the most relevant of the intellectual property categories that could go into your proposal, namely: copyright and trade secrets. Both of these areas are very complex and the most correct approach for you will be fact specific. The following discussion offers broad generalizations. You should obtain legal advise for your particular situation.

Copyright comes into existence when someone creates a tangible form of expression of an idea, such as a written report, software, a chart, a power point presentation. In the first instance, the creator of that tangible form of expression, ("the Work") owns the copyright in the Work. To own the copyright means that you have certain exclusive rights over its use for a set period of time. Typically, those exclusive uses are to reproduce, distribute, display, and modify the Work. Please notice that copyright applies only to "the expression of the idea" and not the underlying idea. Unless your "idea" has been patented or is protected as a trade secret, anyone can use your idea without your permission.

If you own the copyright in the Work, then of course you can use it as you wish. But do you own it? If you are a business entity and an employee created the Work, then most likely you do own the copyright. But if a third party created the Work you intend to use in your proposal, then they own the copyright. In order for you to use the material without infringing the copyright interests of another or to own the copyright and therefore have those exclusive rights, you need to be proceed carefully.

If you wish to use the ideas of another such as you may find on the Internet or in a released winning bid, as long as such material is not protected by patent, and you are using the underlying idea but not the specific way that they expressed that idea, then most likely you may use that idea without their permission. But if you incorporate in your proposal, that is copy, how they expressed the idea, you are likely guilty of copyright infringement. Similarly, if you use the services of third parties to flesh out the ideas to appear in your proposal, such as methodology, staffing, performance techniques, in order for you to own the copyright in such work, you must obtain a written assignment of the copyright. Language of assignment of the copyrightable Works being created by the third party for you should appear in the contract that you have with them. Alternatively, if they will not agree to assign the copyright, you should at least obtain a "license" to use the work that they have created for you.

If you are not going to patent your ideas, which could be impossible, impracticable and costly, what can you do? The law of trade secrets may offer a useful alternative. In order for the confidential or proprietary information that you have and/or wish to include in your proposal to qualify as a trade secret, there are two criteria to be met. First, don't worry, the information does not have to be anything unusual or "eye poppingly" original. Instead, it is the kind of information that you have accumulated, discovered, developed or generated in the course of operating your business, that is not generally known and gives you a competitive edge. Second, you must take reasonable steps to preserve the secrecy of the information.

Examples of some reasonable steps you can take so that the information can be protected by law include:First, identify what the information is that you wish to protect. Some examples of the kinds of information that can be your trade secrets are: customer and supplier lists, staffing, technical support, software you use, internal procedures you have developed, techniques and systems you employ. However, be selective as to what information you consider important enough to protect. That will give you better control over the process. Second, take precautions as to who actually will have access to the information. You may stamp "confidential" on the documents; have employees, consultants, and other third parties sign confidentiality agreements; lock away sensitive materials; protect computers with fire-walls and passwords; limit access to those "with a need to know;" appropriately redact materials that will appear in public, and consistently enforce your secrecy procedures.

The Freedom of Information Act of the federal government and many states have built in some mechanisms for protecting trade secrets. Likewise, most states and the District of Columbia have a statute that addresses trade secret protection. Under the state laws, you may have a claim against another who has misappropriated your trade secret. To misappropriate means that they either wrongfully acquired the information or disclosed it to a third party or used it without your permission. You can see from this explanation why it is important to guard your trade secrets. If inadvertently you let the secret out, then it is in the public domain and anyone has the right to use it, provided they can show they obtained it lawfully.

With this general guidance in mind, hopefully, you will look at the practices you employ when developing proposals with fresh eyes so as to protect your intellectual property without infringing the rights of others.

Barbara I. Berschler, has practiced general business law since 1985. A frequent lecturer about intellectual property, she particularly enjoys working on matters related to copyright and trademark.Her website contains other articles of interest to business owners.www.Berschlerlaw.com. She can be contacted at: Barbara@Berschlerlaw.com.The information contained in this article is not intended as legal advice. If you need legal advice on a matter, please contact an attorney directly. © Barbara I. Berschler 2007

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