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

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

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

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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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Bogus IP demand letters

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

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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How to evaluate IP risks?

• Identification of risks

• Assessment of risks

– Probability?

– Impact?

• Risk management

– Mitigation strategy?

– Monitoring

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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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Example of two pages report

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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

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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/

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