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Intellectual Property Management

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  • 1. IP Management Tools & Strategies : Bit by Bit / Putting it Together
    Pierce Law Information Literacy Program
    Professor Jon Cavicchi
    ©2010
  • 2. Bit by bit / Putting it togetherPiece by piece Every little detail plays a partsEverything depends on executionPutting it together / That's what counts!Ounce by ounce / Putting in togetherFirst of all you need a good foundationOtherwise it's risky from the startBut without the proper preparationLink by link / Making the connections
  • 3. Not the same universe as past generations…
    Professors Homer Blair & Karl Jorda
    IP Managers for Big Pharma and Itek Government Spy Satellites : 1960’s – 1980’s
    IP Managers in the New Millenium
  • 4. IBM Example
    IBM, the U.S. company that gets more patents than anybody, in an internal study some 10 years ago determined that of the 10,000 of their own patents studied only 40 had real value. Only 40. That's a whopping 0.4%.
    So why does IBM continue to get around 3,000 patents year after year? Because, for them, the file "early and often" scenario of applying for patents is far cheaper than the alternative of studying the potential value of a budding technology or invention. So they spend the $3,000 or so it costs for their mostly in-house patent practitioners to get a patent rather than spend $10,000, $20,000 or even more it would take to analyze future business viability. And their method pays off big time. That tiny little 0.4% nets, not grosses, nets about $2 billion a year in licensing fees alone (they don't account separately for patents where they protect their own proprietary exclusivity to some profit stream from their own products). But you can't afford the "file early and often" method of applying for patents in the hopes for a big payoff.
  • 5. IP Management in Time & Space
  • 6. IP Management is multidimensional
    Law
    IP
    Licensing / contract
    Legal & non-legal data
    Business
    Management
    Non profit technology transfer
    Managing university knowledge assets
    Custom Solutions = Consultants
    Technology = software
    JD
    MBA
  • 7. IP Life Cycle
  • 8. Value Extraction Chain
  • 9. IP Business Transactions
  • 10.
  • 11.
  • 12.
  • 13.
  • 14.
  • 15. University Setting
  • 16. Hi, Jon:
    To cut to the chase, though, most of the tools that are used in managing IP developed in the university setting have to do with managing the flow of discoveries/technology from the research lab to the TTO and then on to commercialization partners. Most of the rest of the resources that people use are in the following areas:
    1. IP valuation tools (how to measure value)
    2. Marketing tools (all kinds of business reports indicating what companies are active in which technology areas - used to target prospective licensees, of course)
    3. Patent searching tools, naturally, not so much to see what might be blocking but to see whether a disclosure is novel.
    Then, there is the reverse side of IP Management - that is managing 3rd party rights where universities are users as opposed to developers of IP.
    These are mainly internal management systems and there aren't tools used - other than IP lawyers who understand the legal limitations on non-commercial or academic use of 3rd party owned patents and copyrights.
    --Karen
  • 17. What are you managing?
  • 18.
  • 19. Breadth of IP Management Course
  • 20. Legal Research Tools & Strategies
    Remember those core primary and secondary sources, access, validation tools…
  • 21. Super Syllabus
    Integration of Intellectual Property Rights
    Example of Integration and Overlapping IP Rights
    Ideas and Inventions
    Record Keeping & Laboratory Notebooks- Good Housekeeping Practices
    E-Notebooks
    Harvesting/Extracting Inventions – 14 Point Policy
    Invention Disclosures
  • 22. Inventorshipand Joint Inventorship
    Inventorship versus Ownership of Inventions
    Ownership outside US
    Management of Employee Inventions
    Disclosure Review Committees / Stage Gate Processes
    Types of Patent Searches / Tools for Accessing Information
    Assessing Patentability
    Trade Secrets – Policies and Procedures
    To Patent and/or to Padlock
    Creating a Synergistically Balanced Portfolio
    proper balance between patents, trade secrets and other forms of intellectual property
    Defensive Publications
    Budgetary Considerations
  • 23. Maximizing Preservation of IP and Avoiding Disclosure/Dissemination/Misappropriation
    New Hire Procedures
    Entrance Interviews
    Employment/Proprietary Rights/Invention Agreements
    Non-Compete Provisions; Enforceability of Same
    Termination Agreements/Exit Interviews
    Disgruntled Employee/Inventor
    Agreement Basics
    Confidentiality Agreement
    One-way; Two-way; Corporate Policy
    Collaboration / Joint Development
    Consultant Services
    Technical, Marketing/Advertising, Web Design
  • 24. Patent Processes / Practice before the USPTO
    Preparation & Prosecution
    Interviews
    Issuance
    Appeals
    Written Description / Best Method Requirements
    Export License / Secrecy Order
    Rule 56 / Inequitable Conduct
    International / Foreign Filing Strategies
    PCT / EPC
    Non-PCT Countries
  • 25. Developing & Maintaining an IP Budget
    Management of Costs in the IP Portfolio
    Outside Counsel
    Annuities
    3rd Party Matters (Oppositions)
  • 26. Trademarks
    Corporate Trademark Policy
    Trade Names, Housemarks, Slogans
    Selection, Searches, Clearance
    US & International Clearing & Filing Strategies
    Tiering Country Selection
    Developing and Meeting a Budget
    Establishing /Maintaining Proper Use & Care of Trademarks
    Copyrights
    Policies and Review Procedures
    License and Assignment
    Copyright Office
  • 27. Advanced Management Strategies
    Offensive and Defensive
    Interference Practice
    Conception, Reduction, Diligence, Corroboration
    Interference Proceedings
    Reexamination Practice
    Reissue Practice
  • 28. Third Party Matters
    Competitive Analyses (Mapping & Other Tools)
    Third Party Patents & Handling of Same
    FTO Studies (Technical and/or Legal)
    Outside Submission & Policies
  • 29. Managing the IP Portfolio
    IP Policies
    Protection of Company-Owned IP
    Third Party IP, Marking,
    Publication
    Technical Publication Review
    Advertising Review
    IP Strategies
    Understanding, developing, executing, managing IP strategies
    Committees, Budgets
    consistent with overall business objectives
    IP Audits (Due Diligence)
    User Friendly Portfolios
    IP Education
    New Hiring,
    IP 101
    Advanced Inventor Presentation
    Subject Matter & Target Audiences
  • 30. Legal Treatises - NOT
  • 31.
  • 32.
  • 33. Legal Periodical Literature
    Follows the theme…
    Multifocul
    Use general tools and dedicated IPM titles
  • 34.
  • 35.
  • 36.
  • 37.
  • 38. Dedicated Journals
  • 39. Online Journals
  • 40. University Webs
    Research Rule 1 : use human beings
    e.g. Prof. Hersey
  • 41. Lots of Federal involvement with university licensing
  • 42.
  • 43. Special Interest Groups
  • 44. Continuing Legal Ed (CLE)
  • 45. Professional Associations
    2-B CP: Developing a Robust IP Strategy to Insure IP Supports your Corporate Objectives
    3-B CP: Strategies for Intellectual Property Management in a Difficult Economy
    4-B CP: Intellectual Property Strategy in Real Life: Integrating Intellectual Property Strategy Development with Other Initiatives
    6-C HTS: Intellectual Property Issues Facing Companies in Turbulent Times: Telecommunications in Turmoil
  • 46. Accounting Firm Giants
  • 47. MANAGING PATENT LITIGATION: SUCCESSFUL RESULTS AT REASONABLE COST Mark L. Levine Alan E. LittmannBartlit Beck Herman Palenchar & Scott LLP
    MANAGING PATENT LITIGATION COSTS Christopher O. Green James F. McDonough III Fish & Richardson P.C.
    HOW TO SUCCESSFULLY MANAGE COSTS IN PATENT CASES FROM THE PERSPECTIVE OF IN-HOUSE COUNSEL Andrew L. Schaeffer E.I. du Pont de Nemours and Company
    MANAGING INTELLECTUAL PROPERTY IN AN ECONOMICALLY CHALLENGING ENVIRONMENT, OR HOW IN-HOUSE COUNSEL CAN PAY FOR THEMSELVES Carolyn Blankenship Thomson Reuters Copyright
    ECONOMIC APPROACHES TO INTELLECTUAL PROPERTY POLICY, LITIGATION, AND MANAGEMENT Dr. Gregory K. Leonard Lauren J. Stiroh NERA Economic Consulting
    PATENT PORTFOLIO MANAGEMENT Noreen Krall Sun Microsystems Inc.
    EFFECTIVE MANAGEMENT OF AN INTERNATIONAL TRADEMARK PORTFOLIO John D. Danforth
    SOME THOUGHTS ON BEST PRACTICES FOR THE ATTORNEY-CLIENT COMMUNICATION AND THE CORPORATE PATENT COUNSEL John C. Todaro Merck & Co., Inc.
    CORPORATE COUNSEL'S ROLE IN PATENT LITIGATION: MANAGING A LEGAL TEAM TO MEET BUSINESS OBJECTIVES Robert A. Armitage
  • 48. Seminars & conferences for lawyers & C level executives
  • 49. Webinars
  • 50. Free Content
  • 51. 2010 Winter Meeting:
    E discovery: Best Practices for Chief IP Counsel
    In Re: Bilski
    IP Department
    Think Before You Hit Send: What You Must Know To Protect Attorney-Client Privilege of Corporations In Patent Cases and In The Global Business Environment.
    Legislative Update
    Trade Secret Protection in a Global Economy
    What we learned about resolving IP disputes in an economic downturn and how to apply those lessons learned going forward.
    Alternative Approaches to Reducing Patent Litigation Costs
  • 52. Regional Patenting Authorities /NGOs
  • 53.
  • 54. National Offices
  • 55. Web 2.0 : Social networking & content
  • 56. Blogs
  • 57. Solutions Providers
    The new frontier…
    They are coming out of the woodwork…
  • 58.
  • 59.
  • 60. Information management
    * Manage contracts, including licensing, employment, NDAs, vendor agreements and more
    * Get a unified view of all commitments and liabilities and visibility to all incoming and outgoing obligations
    * Search, roll up, alert and report on expirations, renewals, warranties, indemnifications and annuity date
    * Generate contract reports linked to other factors, such as royalty payments related to a particular technology or all agreements with a particular outside firm
    * Complete view of your portfolio by integrating data from multiple docketing systems, databases, spreadsheets and other sources. It shows you the all-important relationships among people, assets, activities and organizations. The system generates alerts to keep the right people proactive about deadlines and obligations. And it gives users ultra-flexible reporting capability to extract exactly the information they need when they need it. It even keeps you up to date on technologies, competitors and information from IP offices.
    Workflow management
    * Streamline workflow and facilitate repeatable processes, reducing contract management costs
    * Manage contract approval processes, whether serial or parallel
    Risk management
    * Maintain meticulous records and an audit trail of all contract-related activities to aid regulatory compliance
    * Ensure thorough, efficient due diligence by integrating information key to transactions and litigation
    * Monitor expense, royalty and other revenue-related agreements and issue alerts on missed payments or forecasts
  • 61.
  • 62.
  • 63.
  • 64. “Full Service” Law Firms
  • 65. IP Management ambulance chasers
  • 66. A firm that helps schools set up patents for their discoveries and assists in finding public companies looking to purchase them. The company calls itself an intellectual property matchmaker.
  • 67. Technology Exchanges
  • 68. Putting it Together…
    Use technology to make you an information literate IP manage
    RSS feeds
    Integrating social networking
    Clipping services / Alerts (e.g. Wexis, Google, Amazon…)
    Use human beings
    Join professional associations
    Law librarians are trained to filter data to provide you information

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