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.
Why to evaluate IP risks and why you need IP strategy?

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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
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29.09.2014
Mikk Putk

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
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29.09.2014
Mikk Putk

5.
Bogus IP demand letters
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http://www.standuptodemand.com/
29.09.2014
Mikk Putk

6.
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http://www.standuptodemand.com/Content/docs/bad-letter-comparison.pdf
29.09.2014
Mikk Putk

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
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29.09.2014
Mikk Putk

8.
How to evaluate IP risks?
•Identification of risks
•Assessment of risks
–Probability?
–Impact?
•Risk management
–Mitigation strategy?
–Monitoring
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29.09.2014
Mikk Putk

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 $$$$$$
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29.09.2014
Mikk Putk

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Example of two pages report
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29.09.2014
Mikk Putk

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
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

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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