A Strategic Approach to Identifying and Managing Valuable Intellectual Property Assets

1. Presented By:
Kelley Clements Keller, Esq.
A Strategic Approach to
Identifying and Managing Valuable
Intellectual Property Assets
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2. Business = Value
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Every company’s raison d'être is to
create, deliver, and capture value.

3. Business = Value
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Every company has knowledge,
information, and ideas that are
integral to its ability to create, deliver,
and capture that value.

4. That means you!
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5. Knowledge, Information, Ideas
 Collectively, this knowledge, information, and bank of
ideas comprise your company’s intellectual
property assets.
 These assets, which are the product of human
intellect, imagination, creativity, and
inventiveness, are created by you and your
employees and exist throughout your entire
organization.
 Although these assets are intangible, they have
identifiable marketplace value.
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6. Why Do We Care?
 Why does this matter?
 Pain points that impact businesses
 Strategically
 Financially
 Personally
 A business centric IP strategy can help you lessen the
pain and reduce attendant fear.
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7. Intellectual Property Regimes
STEP 1: Have a Basic Understanding of IP
 Patents
 Trademarks
 Copyrights
 Trade Secrets
 Others, i.e. domain names, “know-how”
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8. Patents
 Protect useful inventions, or improvements thereof
 Inventor must make full disclosure, including “best
mode” for carrying out invention
 In return, inventor receives the exclusive right to
make, use, and sell for a limited period of time
(20 years from date of filing for utility patents)
 Goal is to encourage innovation and
product development
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9. Trademarks and Trade Dress
 Protect unique words, names, symbols, logos, and some
forms of product design and packaging, that identify the
source of goods and services; rights arise from use in
commerce
 Federal protection available when mark is in use in
interstate commerce
 May be protected in perpetuity so
long as the mark remains in use
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10. Copyrights
 Protect the original expression of an idea
 Automatic protection upon fixation in tangible
medium; federal registration confers numerous
presumptions
 Current Term is Life of Author
+ 70 Years (Extended in 1998 –
Sonny Bono Copyright Term Extension Act)
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11. Copyrights
 Copyrighted content is always owned by the Author unless
work was created within the scope of employment or there
is a written agreement to contrary, i.e. Work Made for Hire
 Copyright has made a concerted effort to
keep up with media changes, including
software development, but there remain
numerous challenges posed by the ubiquity
of the Internet and explosion of
social media
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12. Trade Secrets
 Protect confidential processes, techniques, or methods
used for advantage in a trade or business, e.g. recipe for
Coca-Cola®
 Protected by contracts:
 Non-disclosure agreements
 Confidentiality agreements
 Subject matter:
 Proprietary information with
independent economic value that, if
stolen, would cause economic harm to the owner
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13. Other Forms of IP
 Domain Names / Internet Assets
 “Know-How”
 Institutional knowledge
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14. Business Centric IP Strategies
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STEP 2: Understand How to
Identify and Protect It
 Consider your company’s value proposition, the most important part of
your business model, when thinking about the role of IP in your
company.
 Does it provide a means to identify your company’s intellectual
property assets;
 a procedure for protecting your IP assets through proper legal regimes;
and
 a way to manage them in a way that creates value for
you, your customers, and your bottom line.

15. Identify and Protect IP Assets
 Think broadly when identifying assets.
 Identify the full range of your assets.
 Fully recognize of the value of your assets in the
marketplace.
 Properly protect those assets that
need to be protected through legal
regimes.
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16. Company Wide Presence
 IP assets are lurking throughout your
company.
 Marketing Department
 Management and Human Resources
 Finance and Accounting
 Information Technology
 Research and Development (R&D)
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17. Marketing Department
 Forms of IP Usually Present:
 Names, slogans, logos, advertisements, brochures,
pamphlets, ad copy under development,
lists/databases of customers and prospects, and
content for social media pages
 Methods of Protection:
 Trademark
 Copyright
 Trade Secret
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18. Management and HR
 Forms of IP Usually Present:
 Recruiting brochures, employee handbooks,
proprietary forms and checklists, written training
materials, and company newsletters
 Methods of Protection:
 Copyright
 Trade Secret
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19. Finance and Accounting
 Forms of IP Usually Present:
 Contractual forms, presentation material describing
the company’s financial performance, written
methodologies explaining how the company handles its
finances, and employee pay records
 Methods of Protection:
 Copyright
 Trade Secret
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20. Information Technology
 Forms of IP Usually Present:
 Web site design, domain names, company-specific
training manuals for computer equipment and
software, original computer code, email lists name
registry
 Methods of Protection:
 Copyright
 Trade Secret
 Domain Names
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21. Research and Development
 Forms of IP Usually Present:
 New and useful inventions, business processes,
improvements to existing inventions and processes,
and laboratory notes documenting invention discovery
dates and charting the progress on various projects
 Methods of Protection:
 Patent
 Trade Secret
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22. Manage Your IP Assets
STEP 3: Understand How to Manage Your IP So
That is Creates Value for You
 Steer Clear of Infringing Other’s IP
 Leverage your IP assets to create financial value
and increase recurring revenue streams
 Maintain a comprehensive portfolio of IP assets
and the intangibles that travel alongside them
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23. Managing Your IP Assets
 Steer Clear of Infringement
 Can be extremely expensive
 litigation costs, injunctions, damage awards
 Potential to put your business “out-of-business”
 both innocent and willful infringement may be actionable
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24. Managing Your IP Assets
 Leverage your IP assets to create financial
value and increase recurring revenue streams
 Licensing agreements
 Buy/sell agreements
 Strategic partnerships
 Joint development agreements
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25. Managing Your IP Assets
 Maintain a comprehensive portfolio of your IP assets
and other intangibles that travel with them
 Coupling your IP and other intangibles will help to drive value
in your IP portfolio
 Bundle and Group Intangible
Assets So They Are Easier to
Manage
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26. Back to the Beginning
 How can a business centric IP-strategy address your pain
points?
 Strategic Fears
• Identifying and managing your IP will keep you on track to grow
and/or sell your business – maintain a portfolio
 Financial Fears
• You have the risk of losing significant revenue if you fail to
enforce your IP and/or ignore opportunities to leverage it.
 Personal Fears
• Increase your security in your company and validate your value
proposition.
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27. Importance of Intellectual Property
Our reliance on owning our creativity still remains strong.
“There is so much in our economy
that is linked to branded products,
patented products, copyrights. So much
of our economy thrives on creativity.”
--former U.S. Secretary of Commerce Carlos Gutierrez
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28. Thank You!
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Kelley Clements Keller, Esq.
(717) 386-5035
kkeller@thekellerlawfirm.com
@KelleyKeller
/The KellerLawFirmLLC
/KelleyKeller