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Evaluating intellectual property risks and preparing IP strategy

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How to evaluate IP risks?
What to consider when preparing IP strategy?
Most valuable business assets
Potential IP risks
US specific IP risks
Bogus cease and desist letters
Building an IP strategy
How to evaluate IP risks?
IP risks evaluation tool

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Evaluating intellectual property risks and preparing IP strategy

  1. 1. Mikk Putk, Patent attorney Sarap & Putk Patent Agency How to evaluate IP risks & What to consider when preparing IP strategy 29.09.2014 1 Mikk Putk
  2. 2. Why to evaluate IP risks and why you need IP strategy?
  3. 3. Potential risks •General IP awareness •Trademarks, logos, business & domain names •Product designs, inventions & patents •Contracts & agreements •Copyrights, databases, software •Trade secrets, confidential information •Ownership •Employee policies •Valuation, competitors, infringements •IP strategy & management 3 29.09.2014 Mikk Putk
  4. 4. Most common USA specific IP risks •Trademarks doesn’t meet the requirements for registration & protection •Failure to show the trademark used in commerce •There is no clear picture what type of Intellectual property company owns •IP ownership rights are not regulated in contracts •Authors/Inventors are not agree to transfer their rights to the company •Froodom to operate is not clear •Freedom to use trademarks, copyrights is not clear •Bogus IP demand letters, patent trolls 4 29.09.2014 Mikk Putk
  5. 5. Bogus IP demand letters 5 http://www.standuptodemand.com/ 29.09.2014 Mikk Putk
  6. 6. 6 http://www.standuptodemand.com/Content/docs/bad-letter-comparison.pdf 29.09.2014 Mikk Putk
  7. 7. Building an IP strategy •Educate management and employees to improve your knowledge of protecting your IP •Make a list, what kind of IP you have •Compare what is most valuable for your business, well known product name, a new technical improvement or design solution •Analyze the risks what happens if you do not protect your products, know-how and how it may harm your business if any of your original work you have created were to be used by another company •Do some background research to determine similar solutions to check what is done before in the same field •Monitor the activity of competitors •Make a budget how much you can spend per year to protect your IP •Link your IP protection strategy to your business plan •Appoint a person who is responsible for your company’s IP management 7 29.09.2014 Mikk Putk
  8. 8. How to evaluate IP risks? •Identification of risks •Assessment of risks –Probability? –Impact? •Risk management –Mitigation strategy? –Monitoring 8 29.09.2014 Mikk Putk
  9. 9. IP risks evaluation tool http://ipinstruments.com/ •Helps to determine to most critical issues •Gives the guidelines for your IP strategy development •Helps to learn about IP management •Gives comprehensive overview of current IP situation •Simple, easy to understand and answer online questionary •2 pages color coded visual IP audit report that gives within few seconds the clear picture about the IP situation in the company •Saves lot of time and $$$$$$ 9 29.09.2014 Mikk Putk
  10. 10. Example of two pages report 10 29.09.2014 Mikk Putk
  11. 11. 11 T1: General IP awareness T2: Trademarks, logos, business & domain names T3: Designs, inventions & patents T4: Licensing, contracts & agreements T5: Copyrights, databases, software, internet T6: Trade secrets, confidential information T7: Ownership T8: Employee policies T9: Valuation, competitors, infringements T10: IP strategy & management Total score: 48,45 Case Study - FutuTech 29.09.2014 Mikk Putk
  12. 12. 12 T1: General IP awareness T2: Trademarks, logos, business & domain names T3: Designs, inventions & patents T4: Licensing, contracts & agreements T5: Copyrights, databases, software, internet T6: Trade secrets, confidential information T7: Ownership T8: Employee policies T9: Valuation, competitors, infringements T10: IP strategy & management Total score: 48,45 Total score: 71,6 29.09.2014 Mikk Putk
  13. 13. 13 Thank you! Contact Sarap ja Putk Patendibüroo, http://www.patent.ee, patent@patent.ee Tartu: Margus Sarap, margus.sarap@patent.ee, tel 747 7058 Tallinn: Mikk Putk, mikk.putk@patent.ee, 53 039 088, Skype: mikkputk https://www.facebook.com/Patent.ee Presentations: http://www.patent.ee/et/esitlused/ 29.09.2014 Mikk Putk

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