💡 IP & Technology
Patents, trademarks, trade secrets, licensing, open source, AI governance, tech contracts
CLO Primer
For a tech or healthcare/medtech company, intellectual property is often the company's most valuable asset class. The CLO must have a working knowledge of the IP portfolio — patents, trademarks, trade secrets, and copyrights — sufficient to make strategic decisions about prosecution, licensing, enforcement, and M&A valuation without necessarily being a technical IP specialist. You hire and manage IP counsel; you don't draft patent claims yourself.
AI governance has become a mandatory new CLO domain. Questions that must be answered include: What AI tools are employees using? Who owns the output? What happens to company data uploaded to third-party AI platforms? How do vendor AI provisions in SaaS contracts affect your IP rights? What is the company's AI risk policy? The CLO typically co-leads an AI governance working group with the CISO and CTO.
Trade secret protection is often more practically important than patent protection for fast-moving tech companies. The Defend Trade Secrets Act (DTSA) created a federal cause of action, but state law (typically UTSA) still governs most disputes. Protection requires "reasonable measures" to maintain secrecy — which means documented access controls, NDA programs, and employee onboarding/offboarding protocols.
Open source compliance is frequently overlooked but carries real risk. Copyleft licenses (GPL, AGPL) can trigger obligations to release proprietary source code if open source components are incorporated into commercial products. Every company needs an open source policy and inventory process.
Key Concepts
- Patent prosecution lifecycle: provisional, utility, continuation, divisional applications
- Patent licensing: exclusive vs. non-exclusive, field-of-use limitations, royalty structures
- Patent litigation: IPR proceedings (PTAB), ITC Section 337, district court
- Trademark clearance, registration (USPTO), and global portfolio management (Madrid Protocol)
- Trade secret definition: reasonable measures to maintain secrecy; misappropriation
- DTSA (federal) and UTSA (state) — claims, remedies, ex parte seizure orders
- Copyright: work for hire doctrine, software copyright, DMCA safe harbors
- AI-generated content: authorship questions, training data copyright issues
- AI governance framework: inventory, risk classification, vendor assessment, policies
- Open source license categories: permissive (MIT, Apache) vs. copyleft (GPL, AGPL)
- Employee invention assignment agreements — scope, state law limitations (CA, WA)
- IP representations in M&A: freedom to operate, chain of title, third-party claims
- Technology licensing: IP indemnification, warranty disclaimers, source code escrow
- Domain names, brand protection online: UDRP, trademark monitoring
- Standard essential patents (SEPs) and FRAND licensing obligations