An intellectual property audit involves taking an inventory of a company's known IP assets, analyzing how they are protected, searching for unknown or unprotected IP, and reviewing potential IP claims from others. It is important for non-tech companies to conduct audits to identify IP that needs protection, assess risks from other parties' IP claims, and ensure policies are sufficient. Key parts of an audit involve assessing patents, trademarks, copyrights, and trade secrets.
Inventor Boot Camp Thomas Franklin 10 17 2009dr2tom
Introduction to Intellectual Property (IP)
Presentation includes types of IP - Trade Secrets, Copyrights, Trademarks, Patents; Timing Issues for Protecting IP; and Patent Strategy Models
It all starts with an epiphany. Every invention begins with a single “eureka moment” or some “brilliant revelation” that causes the inventor to take action.
These epiphanies become the idea seeds planted by inventors around the world. But we can only wish the process was as simple as adding water and fertilizer and waiting for the ideas to spring to life.
Inventions are not just patents to be hung on a wall. They are the starting point for a new business enterprise. So, not only does the inventor have to figure out how to create a working product or device, they also have to drive it forward, creating a business model that will enable it to survive. And that’s where we come in.
The Inventor Boot Camp will help you focus on what’s important. We will show you ways to leverage your time and resources, eliminate unnecessary work, and direct your energies towards driving your product forward. And most importantly, we will teach you what it takes to become successful.
Key Strategies to Learn
How to perform an early stage benefit/market analysis to decide in advance who your end customer will be. Once you fully understand who your customer is, only then can you begin to piece together your business model.
How to develop a profit-centric mindset, the same thinking used by most successful inventors, to maximize your odds of success.
How to decide if your invention needs to be patented. If it doesn’t, this can save you significant amounts of money.
Who you should be listening to. Advice will come from many sources, but not all of it will be good.
How to best position yourself for funding. Hear it directly from the people who have money to invest.
Inventor Boot Camp Thomas Franklin 10 17 2009dr2tom
Introduction to Intellectual Property (IP)
Presentation includes types of IP - Trade Secrets, Copyrights, Trademarks, Patents; Timing Issues for Protecting IP; and Patent Strategy Models
It all starts with an epiphany. Every invention begins with a single “eureka moment” or some “brilliant revelation” that causes the inventor to take action.
These epiphanies become the idea seeds planted by inventors around the world. But we can only wish the process was as simple as adding water and fertilizer and waiting for the ideas to spring to life.
Inventions are not just patents to be hung on a wall. They are the starting point for a new business enterprise. So, not only does the inventor have to figure out how to create a working product or device, they also have to drive it forward, creating a business model that will enable it to survive. And that’s where we come in.
The Inventor Boot Camp will help you focus on what’s important. We will show you ways to leverage your time and resources, eliminate unnecessary work, and direct your energies towards driving your product forward. And most importantly, we will teach you what it takes to become successful.
Key Strategies to Learn
How to perform an early stage benefit/market analysis to decide in advance who your end customer will be. Once you fully understand who your customer is, only then can you begin to piece together your business model.
How to develop a profit-centric mindset, the same thinking used by most successful inventors, to maximize your odds of success.
How to decide if your invention needs to be patented. If it doesn’t, this can save you significant amounts of money.
Who you should be listening to. Advice will come from many sources, but not all of it will be good.
How to best position yourself for funding. Hear it directly from the people who have money to invest.
This IP Strategy Overview was presented at a conference of innovators at Georgia Tech's College of Architecture in October 2013. The goal of this presentation is to go beyond the usual lawyer-generated content to highlight not only the positive aspects of IP, but also to give a reality check as to the likely ROI of investment in protection. A basic overview of IP (patents, copyrights, trademarks, trade secrets) is provided. Additionally, commonly overlooked forms of intangible asset value are presented. A case study of an innovation protection strategy is highlighted. Recommendations for business relevant IP and patent protection strategies are also included.
IP rights are an important class of intangible assets that can be assigned or licensed to generate revenue. Indeed, some companies do not make or sell products; their entire revenue is derived from the licensing of their patents. Suffice it to say, licensing revenue has become a significant source of value in the global intellectual property economy. This webinar will help you better understand the complex legal issues associated with IP transactions.
To listen to this webinar on-demand, go to: https://www.financialpoise.com/financial-poise-webinars/buying-selling-ip-2020/
Accuprosys offers Intellectual Property Law Services, Intellectual Property Rights,
Trademark Registration, Design Registration and Copyright Registration Services to Indian clients and as well as abroad clients. IP related services are at most demand because of the dire necessity to protect ones IP from infringements. If ones brand is not protected all the efforts, pains that have been put across to build the business over years will go in vain – If protected
effectively the brand might be worth of billions of dollars in the near future.
Slide deck presented by Austin attorney Kirk Cesari on September 17, 2013 at the Austin Chamber of Commerce as part of Texas State SBDC's Spectrum Knowledge Transfer Series.
Intellectual property (IP) is the lifeblood of every knowledge-based start-up or venture. Learn how to identify and manage your intellectual property in a strategic way and examine how it fits in with your overall business model. A large part of your competitive advantage depends on your ability to protect and properly exploit or commercialize your product or service innovations. IP law provides the framework for protecting and commercializing these innovations.
This short presentation provides innovators and entrepreneurs with an overview of the basics of patent and IP protection from a business perspective. The aim and goal is to introduce non-patent experts to topics that, when properly introduced into their organizations, can help reduce risk and maximize the return on innovation investment. Some myths are dispelled in the presentation, also.
What Startups Should Do To Protect Their Big Mobile Application Idea? The Imp...Thomas O. Dubuisson
In today's knowledge economy, intellectual property rights (hereafter "IP") are very important and powerful.
Unfortunately for (young) entrepreneur's, it's not always the first thing that will cross your mind when you start a business. Indeed, you get excited by your project, you have a multitude of activities and issues that you have to deal with, you start to spread your idea everywhere, etc.
These lines (pages) will help you to be aware of the crucial importance of IP in your business (plan). You should strongly consider all these specific IP tools (patent, trademark, design protection, copyright, etc) before launching your mobile app.
IP And Licensing What You Need To Know About Trademarks, Patents And Licens...sdgarrison
A general overview of trademarks, patents and common issues in license agreements presented on March 25, 2011 for The Entrepeneurs Initiative in Tucson, Arizona
This IP Strategy Overview was presented at a conference of innovators at Georgia Tech's College of Architecture in October 2013. The goal of this presentation is to go beyond the usual lawyer-generated content to highlight not only the positive aspects of IP, but also to give a reality check as to the likely ROI of investment in protection. A basic overview of IP (patents, copyrights, trademarks, trade secrets) is provided. Additionally, commonly overlooked forms of intangible asset value are presented. A case study of an innovation protection strategy is highlighted. Recommendations for business relevant IP and patent protection strategies are also included.
IP rights are an important class of intangible assets that can be assigned or licensed to generate revenue. Indeed, some companies do not make or sell products; their entire revenue is derived from the licensing of their patents. Suffice it to say, licensing revenue has become a significant source of value in the global intellectual property economy. This webinar will help you better understand the complex legal issues associated with IP transactions.
To listen to this webinar on-demand, go to: https://www.financialpoise.com/financial-poise-webinars/buying-selling-ip-2020/
Accuprosys offers Intellectual Property Law Services, Intellectual Property Rights,
Trademark Registration, Design Registration and Copyright Registration Services to Indian clients and as well as abroad clients. IP related services are at most demand because of the dire necessity to protect ones IP from infringements. If ones brand is not protected all the efforts, pains that have been put across to build the business over years will go in vain – If protected
effectively the brand might be worth of billions of dollars in the near future.
Slide deck presented by Austin attorney Kirk Cesari on September 17, 2013 at the Austin Chamber of Commerce as part of Texas State SBDC's Spectrum Knowledge Transfer Series.
Intellectual property (IP) is the lifeblood of every knowledge-based start-up or venture. Learn how to identify and manage your intellectual property in a strategic way and examine how it fits in with your overall business model. A large part of your competitive advantage depends on your ability to protect and properly exploit or commercialize your product or service innovations. IP law provides the framework for protecting and commercializing these innovations.
This short presentation provides innovators and entrepreneurs with an overview of the basics of patent and IP protection from a business perspective. The aim and goal is to introduce non-patent experts to topics that, when properly introduced into their organizations, can help reduce risk and maximize the return on innovation investment. Some myths are dispelled in the presentation, also.
What Startups Should Do To Protect Their Big Mobile Application Idea? The Imp...Thomas O. Dubuisson
In today's knowledge economy, intellectual property rights (hereafter "IP") are very important and powerful.
Unfortunately for (young) entrepreneur's, it's not always the first thing that will cross your mind when you start a business. Indeed, you get excited by your project, you have a multitude of activities and issues that you have to deal with, you start to spread your idea everywhere, etc.
These lines (pages) will help you to be aware of the crucial importance of IP in your business (plan). You should strongly consider all these specific IP tools (patent, trademark, design protection, copyright, etc) before launching your mobile app.
IP And Licensing What You Need To Know About Trademarks, Patents And Licens...sdgarrison
A general overview of trademarks, patents and common issues in license agreements presented on March 25, 2011 for The Entrepeneurs Initiative in Tucson, Arizona
The presentation commences with a compelling introduction to the concept of Intellectual Property (IP) rights and their critical role in safeguarding innovations and creativity in various industries. It highlights the significance of protecting intangible assets to foster innovation, encourage investment, and stimulate economic growth.
The presentation begins with an introduction to Intellectual Property Rights (IPR) and its importance in safeguarding various forms of creative and innovative works. It emphasizes the significance of copyright, trademark, and patent protections in fostering creativity, enabling businesses to thrive, and encouraging technological advancements.
Intellectual property is one of the most important aspects of your business, but how do you protect what makes your brand unique?
In this webinar find out the various ways you can protect your brand, invention or idea in a competitive market.
Buying & Selling IP (Series: Intellectual Property 201)Financial Poise
IP rights are an important class of intangible assets that can be assigned or licensed to generate revenue. Indeed, some companies do not make or sell products; their entire revenue is derived from the licensing of their patents. Suffice it to say, licensing revenue has become a significant source of value in the global intellectual property economy. This webinar will help you better understand the complex legal issues associated with IP transactions.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/buying-selling-ip-2021/
Intellectual Property Strategy - Drive Oregon Event - February 2014Forth
Presentation by John Russell and Anna McCoy, of Alleman Hall McCoy Russell & Tuttle LLP. More information about the presenters and their firm is available at: http://www.ahmrt.com/
Patent Due Diligence in the Sale-Acquisition of a Medical Device Company, by ...SHIMOKAJI IP
One of the most important assets of a medical device company is often its patent portfolio. The portfolio can include issued patents, patent applications, and patentable inventions that are not the subject of issued patents or pending patent applications. Whether the seller or buyer of a medical device company, it is imperative to know what assets are in the company’s patent portfolio and factors that affect their value.
Commercially available, off the shelf patent databases do not often exist to hold the company’s patent portfolio information – at least for many medical device companies of a small to moderate size. Instead, the patent information might be in an excel spreadsheet kept by someone internally in the company. The information might be in the form of paper files kept in a file cabinet.
So, where do you look for patent information?
Presentation made on July 29 2009 in Centurion, RSA to attendees from Innovation Fund, DST and other related people. The presentation paid specific attention to the interaction between patent professionals and the technology transfer process in publicly-funded research institutions..
Intellectual Property Considerations in M&A TransactionsRiveles Wahab LLP
M&A transactions often live or die on the basis of well thought out and executed legal due diligence. Indeed, due diligence often shapes core deal terms, transaction structure, and whether the deal itself even moves forward. For traditional businesses with physical assets, due diligence may come with reasonably obvious do’s and don’ts. However, in M&A deals where intellectual property (“IP”) is the key or sole asset, due diligence becomes even more critical yet far less obvious in terms of best practices.
In such deals, often unique and powerful transaction structure and drafting considerations come into play that are unfortunately overlooked as practitioners often make unwarranted assumptions regarding IP ownership and/or curing defects. Moreover, there are often misconceptions about the applicability of ordinary representations, warranties, and other M&A provisions to IP as a “one-size-fits-all” solution to the often unique array of defects and other “wrinkles” attached to the IP. In these cases, valuing and structuring the transaction can be adversely affected, the post transaction operations of the target business can be compromised, and the rights of both purchaser and seller can be significantly undermined.
This course, presented by Kaiser Wahab, partner in the law firm of Riveles Wahab LLP, which is dedicated to M&A transactions in the private equity space for IP driven early-stage/mature companies, is designed to arm the practitioner with the vocabulary, skill set, and overall understanding of best practices in IP driven M&A transactions.
Intellectual Property Audits for Non-Tech Businesses
1. Session # 309 Intellectual Property Audits for Non-Tech Businesses
2. Panelists: David Bolton – Associate General Counsel, United Space Alliance, LLC Eunice Lin – Executive Vice President & General Counsel, BNA Kathleen Mac Mahon Crannell (Moderator) – Associate General Counsel and Director of Global Export Compliance, United Space Alliance, LLC Paul McQuade– Shareholder, Greenberg Traurig, LLP
16. Many businesses, especially those not in 'technology' industries, do not have significant IP assets and the in house counsel may not live or breath IP issues
17. But that's no reason to ignore some fundamental practices that can help the business capture or protect the value of its trademarks, trade secrets, patentable innovations, web presence, and other IP assets
18. Or, perhaps more importantly, to protect the business from exposure to the IP claims of others
19. What questions should you be asking to evaluate and improve the business's IP sophistication?“Intellectual capital is recognized as the most important asset of many of the world’s largest and most powerful companies; it is the foundation for the market dominance and continuing profitability of leading corporations. It is often the key objective in mergers and acquisitions and knowledgeable companies are increasingly using licensing routes to transfer these assets to low tax jurisdictions.” World Intellectual Property Organization
33. Internal and External Trademark Usage Guidelines
34. License Agreement (for a patent by owner to XYZ)
35. Model Copyright License for Presentations to Associations
36. Model Copyright License for Articles in Association Publications
37. Employee Intellectual Property Assignment and Confidentiality Agreement
38. Top Ten Questions (and Answers) for Protecting Your Company’s Trade Secrets
39. Intellectual Property Inventory Checklist and Other IP Tools for Managing Your Portfolio
40. Request for Indemnification for Patent Infringement http://www.acc.com/legalresources/index.cfmACC InfoPAK - Intellectual Property Primer - Patents, Trademarks, Copyrights, and Trade Secrets - An Introduction to Intellectual Property for In-House Counsel 3rd Edition
58. What is a Patent? A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office. The term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. US patent grants are effective only within the US, US territories, and US possessions. The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Source - United States Patent and Trademark Office http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm
87. What Is a Trademark or Servicemark? A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and servicemarks. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the Patent and Trademark Office. The registration procedure for trademarks and general information concerning trademarks is described in a separate pamphlet entitled "Basic Facts about Trademarks". Source - United States Patent and Trademark Office http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm
88.
89. Trademarks rights must be maintained through actual lawful use of the trademark
90. These rights will cease if a mark is not actively used
91. In the case of a trademark registration, failure to actively use the mark in the lawful course of trade, or to enforce the registration in the event of infringement, may also expose the registration itself to become liable for an application for the removal from the register after a certain period of time on the grounds of "non-use"
92. It is not necessary for a trademark owner to take enforcement action against all infringement if it can be shown that the owner perceived the infringement to be minor and inconsequential
118. Describe all past, current or potential litigation
119. Copies of all cease and desist letters (both sent and received)
120.
121. What Is a Copyright? Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly. The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered by the Copyright Office of the Library of Congress. Source - United States Patent and Trademark Office http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm
148. General - Identify key works developed by Company, public domain works incorporated into the works, works that Company seeks to protect by registration, works to which Company has acquired rights to, either by assignment, license or otherwise, and works to which Company has transferred rights thereto, either by assignment, license or otherwise
175. General rule copyright vests initially in the author of a work
176.
177. Sample “Work for Hire” languageOwnership and Copyright. All right, title and interest, including but not limited to copyright, trademarks, and any other intellectual property rights, in and to any materials or other deliverables produced or provided by Vendor under this Agreement (“Works”), alone or in combination with Client or its employees, shall be deemed works made for hire for Client under the copyright laws of the United States and these Works shall, upon their creation, be owned exclusively by Client. To the extent that any of these Works may not be considered works made for hire for Client under applicable law, Vendor assigns to Client the ownership of such Works, including but not limited to all copyright, trademarks, and any other intellectual property rights.
178.
179. If copyright is not retained, include broad license to use, modify, etc.
191. Copyright policy – make it easier for customers to comply with the copyright laws by providing them with guidance on what they can do and can’t do (e.g., BNA Copyright Guidelines, http://www.bna.com/corp/)
204. CCC was created in 1978 by a group of authors and publishers
205. Today, they represent tens of thousands of authors, publishers and creators from nearly every country in the world, and license the rights to millions of books, journals, newspapers, websites, ebooks, images, blogs and more
206.
207.
208. List all domain names registered to the Company for generic top level domains (.com, .net, .org and .info) and international extensions (.uk, .jp, .de)
209. Identify whether any key trademarks are registered to third parties as domains
210. List the expiration date of all domain names registered to the Company and identify the registrar of record
211. Confirm that payment for such domain names is current
212. Determine whether the Company has registered third party trademarks as domain names
213. Identify all domain names registered to certain people associated with Company, such as the marketing director, CTO, legal department, IT department, or founder
214. Review WHOIS (who is) information to verify ownership and to determine that registration has not expired
215. Identify past, current or potential litigation involving Company domain names, including Uniform Domain-Name Dispute-Resolution Policy (UDRP) or other similar proceedings
216. Copies of all cease and desist letters (both sent and received)
217.
218.
219.
220.
221.
222. Copies of all Agreements of the Company pertaining to any unpatented inventions, designs, styles, know-how or technical assistance whether owned by the Company or licensed by a third party to the Company
223. List key trade secrets developed by Company employees
224. List of all employees past and current and date of each agreement relating to confidentiality and assignment of works created during employment
225. Copies of all standard confidentiality agreements and assignment of works or non-compete agreements
226. Provide Company policies prohibiting disclosure of third party confidential information
227. List of any employees that previously worked for a competitor of Company
228. Describe whether any employees may have brought materials or other IP from a prior employer and whether such employees were subject to any enforceable non-competes affecting their employment after termination of employment
229.
230. List of trade secrets developed by independent contractors
231. List of all independent contractors past and current and date of each agreement relating to confidentiality and assignment of works created during service
232. Copies of all standard Agreements relating to confidentiality, assignment, non-competition and non-solicitation
233. Describe whether any consulting agreement include any licenses of preexisting technology owned by consultant
234. Describe whether any consultants or employees have claimed any rights against the Company for the technology they developed
235. Identify past, current or potential litigation, relating to Company’s trade secrets
236. Copies of all cease and desist letters (both sent and received)
247. Only employees or also third parties (e.g., consultants, contractors)?
248.
Editor's Notes
Copyright registration – Are they still valid? Are they accurate? Confirm accuracy and make necessary updates/corrections.
Remember to keep in mind that a work does NOT have to be registered to claim copyright protection.
Copyright vs. License – I have included license rights because many contractors will refuse to assign copyright. Therefore, the scope of the license is very important. [Example – BNA’s alternative author language]
[CITE BNA EXAMPLE, when it’s part of a product that is not sold]
[CITE BNA EXAMPLE, when it’s part of a product that is not sold]
[CITE BNA EXAMPLE, when it’s part of a product that is not sold]
[EXAMPLE – ATTACH BNA CUSTOMER AGREEMENT AND COPYRIGHT FAQS – EDUCATION IS IMPORTANT; TELL PEOPLE WHAT YOU CAN DO AND NOT DO]
Employee Training [REFER TO BNA POLICY AND MY COPYRIGHT SALES PRESENTATION]Employee policies?How often?Internal home page?