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IP Management Tools & Strategies : Bit by Bit / Putting it
TogetherPierce Law Information Literacy Program
Professor Jon Cavicchi©2010
Bit by bit / Putting it togetherPiece by piece Every little detail plays a partsEverything depends on execution
Putting it together / That's what counts!Ounce by ounce / Putting in togetherFirst of all you need a good foundationOtherwise it's risky from the startBut without the proper preparation
Link by link / Making the connections
Not the same universe as past generations…
Professors Homer Blair & Karl JordaIP Managers for Big Pharma and Itek Government Spy Satellites : 1960’s – 1980’s
IP Managers in the New Millenium
IBM Example IBM, the U.S. company that gets more patents than anybody, in an internal study some 10 years ago determined that of the 10,000 of their own patents studied only 40 had real value. Only 40. That's a whopping 0.4%.
So why does IBM continue to get around 3,000 patents year after year? Because, for them, the file "early and often" scenario of applying for patents is far cheaper than the alternative of studying the potential value of a budding technology or invention. So they spend the $3,000 or so it costs for their mostly in-house patent practitioners to get a patent rather than spend $10,000, $20,000 or even more it would take to analyze future business viability. And their method pays off big time. That tiny little 0.4% nets, not grosses, nets about $2 billion a year in licensing fees alone (they don't account separately for patents where they protect their own proprietary exclusivity to some profit stream from their own products). But you can't afford the "file early and often" method of applying for patents in the hopes for a big payoff.
IP Management in Time & Space
IP MANAGEMENT IS MULTIDIMENSIONAL• Law
– IP– Licensing / contract– Legal & non-legal data
• Business• Management• Non profit technology transfer• Managing university knowledge assets• Custom Solutions = Consultants• Technology = software
JD
MBA
IP Life Cycle
Value Extraction Chain
IP Business Transactions
University Setting
Hi, Jon:
To cut to the chase, though, most of the tools that are used in managing IP developed in the university setting have to do with managing the flow of discoveries/technology from the research lab to the TTO and then on to commercialization partners. Most of the rest of the resources that people use are in the following areas:
1. IP valuation tools (how to measure value)2. Marketing tools (all kinds of business reports indicating what companies are active in which technology areas - used to target prospective licensees, of course)3. Patent searching tools, naturally, not so much to see what might be blocking but to see whether a disclosure is novel.
Then, there is the reverse side of IP Management - that is managing 3rd party rights where universities are users as opposed to developers of IP.
These are mainly internal management systems and there aren't tools used - other than IP lawyers who understand the legal limitations on non-commercial or academic use of 3rd party owned patents and copyrights.
--Karen
What are you managing?
Breadth of IP Management Course
Legal Research Tools & StrategiesRemember those core primary and secondary sources, access, validation tools…
Super Syllabus
• Integration of Intellectual Property Rights• Example of Integration and Overlapping IP Rights• Ideas and Inventions• Record Keeping & Laboratory Notebooks- Good
Housekeeping Practices• E-Notebooks• Harvesting/Extracting Inventions – 14 Point Policy• Invention Disclosures
• Inventorship and Joint Inventorship• Inventorship versus Ownership of Inventions
– Ownership outside US• Management of Employee Inventions
– Disclosure Review Committees / Stage Gate Processes• Types of Patent Searches / Tools for Accessing
Information• Assessing Patentability• Trade Secrets – Policies and Procedures• To Patent and/or to Padlock• Creating a Synergistically Balanced Portfolio
– proper balance between patents, trade secrets and other forms of intellectual property
• Defensive Publications• Budgetary Considerations
• Maximizing Preservation of IP and Avoiding Disclosure/Dissemination/Misappropriation– New Hire Procedures– Entrance Interviews– Employment/Proprietary Rights/Invention Agreements – Non-Compete Provisions; Enforceability of Same– Termination Agreements/Exit Interviews
• Disgruntled Employee/Inventor
• Agreement Basics– Confidentiality Agreement
• One-way; Two-way; Corporate Policy
– Collaboration / Joint Development– Consultant Services
• Technical, Marketing/Advertising, Web Design
• Patent Processes / Practice before the USPTO– Preparation & Prosecution– Interviews– Issuance– Appeals– Written Description / Best Method Requirements– Export License / Secrecy Order
• Rule 56 / Inequitable Conduct
• International / Foreign Filing Strategies– PCT / EPC– Non-PCT Countries
• Developing & Maintaining an IP Budget
– Management of Costs in the IP Portfolio• Outside Counsel• Annuities• 3rd Party Matters (Oppositions)
• Trademarks– Corporate Trademark Policy– Trade Names, Housemarks, Slogans– Selection, Searches, Clearance– US & International Clearing & Filing Strategies– Tiering Country Selection– Developing and Meeting a Budget– Establishing /Maintaining Proper Use
& Care of Trademarks
• Copyrights– Policies and Review Procedures– License and Assignment– Copyright Office
• Advanced Management Strategies
– Offensive and Defensive– Interference Practice• Conception, Reduction, Diligence, Corroboration• Interference Proceedings
– Reexamination Practice– Reissue Practice
• Third Party Matters–Competitive Analyses (Mapping & Other
Tools)–Third Party Patents & Handling of Same
–FTO Studies (Technical and/or Legal)–Outside Submission & Policies
• Managing the IP Portfolio– IP Policies
• Protection of Company-Owned IP• Third Party IP, Marking, • Publication• Technical Publication Review• Advertising Review
– IP Strategies • Understanding, developing, executing,
managing IP strategies
– Committees, Budgets• consistent with overall business objectives
– IP Audits (Due Diligence)– User Friendly Portfolios– IP Education
• New Hiring, • IP 101• Advanced Inventor Presentation
– Subject Matter & Target Audiences
Legal Treatises - NOT
Legal Periodical Literature
Follows the theme…Multifocul
Use general tools and dedicated IPM titles
1990 1992 1994 1996 1998 2000 2002 2004 2006 2008 20100
10
20
30
40
50
60Intellectual Property Management Periodicals Per Year
Year
Num
ber
of P
erio
dica
ls
Trendline
0
50
100
150
200
250
12
205
101
2431
2026
2025
40
Intellectual Property Management Article Topic Breakdown
Num
ber
of A
rticl
es
Patent Infringement Patent Law Patent Licensing Patent Management Patent/Copyright Overlap0
5
10
15
20
25
30
35
40
13
26
13
38
30
Intellectual Property Management Articles: Patent Topics Breakdown
Num
ber
of A
rticl
es
Copyrigh
t infri
ngemen
t
Copyrigh
t Law
Copyrigh
t Lice
nsing
Digital
Rights
Fair U
se
File S
haring
Patent/C
opyrigh
t Ove
rlap
Piracy
0
5
10
15
20
25
30
35
40
76
3
35
57
30
3
Intellectual Property Management Articles: Copyright Topics Breakdown
Num
ber
of A
rticl
es
Dedicated Journals
Online Journals
University Webs
Research Rule 1 : use human
beingse.g. Prof. Hersey
Lots of Federal involvement with university licensing
Special Interest Groups
Continuing Legal Ed (CLE)
Professional Associations
2-B CP: Developing a Robust IP Strategy to Insure IP Supports your Corporate Objectives
3-B CP: Strategies for Intellectual Property Management in a Difficult Economy
4-B CP: Intellectual Property Strategy in Real Life: Integrating Intellectual Property Strategy Development with Other Initiatives
6-C HTS: Intellectual Property Issues Facing Companies in Turbulent Times: Telecommunications in Turmoil
Accounting Firm Giants
MANAGING PATENT LITIGATION: SUCCESSFUL RESULTS AT REASONABLE COST Mark L. Levine Alan E. Littmann Bartlit Beck Herman Palenchar & Scott LLP
MANAGING PATENT LITIGATION COSTS Christopher O. Green James F. McDonough III Fish & Richardson P.C.
HOW TO SUCCESSFULLY MANAGE COSTS IN PATENT CASES FROM THE PERSPECTIVE OF IN-HOUSE COUNSEL Andrew L. Schaeffer E.I. du Pont de Nemours and Company
MANAGING INTELLECTUAL PROPERTY IN AN ECONOMICALLY CHALLENGING ENVIRONMENT, OR HOW IN-HOUSE COUNSEL CAN PAY FOR THEMSELVES Carolyn Blankenship Thomson Reuters Copyright
ECONOMIC APPROACHES TO INTELLECTUAL PROPERTY POLICY, LITIGATION, AND MANAGEMENT Dr. Gregory K. Leonard Lauren J. Stiroh NERA Economic Consulting
PATENT PORTFOLIO MANAGEMENT Noreen Krall Sun Microsystems Inc.
EFFECTIVE MANAGEMENT OF AN INTERNATIONAL TRADEMARK PORTFOLIO John D. Danforth
SOME THOUGHTS ON BEST PRACTICES FOR THE ATTORNEY-CLIENT COMMUNICATION AND THE CORPORATE PATENT COUNSEL John C. Todaro Merck & Co., Inc.
CORPORATE COUNSEL'S ROLE IN PATENT LITIGATION: MANAGING A LEGAL TEAM TO MEET BUSINESS OBJECTIVES Robert A. Armitage
Seminars & conferences for lawyers & C level executives
Webinars
Free Content
2010 Winter Meeting:
E discovery: Best Practices for Chief IP Counsel
In Re: Bilski
IP Department
Think Before You Hit Send: What You Must Know To Protect Attorney-Client Privilege of Corporations In Patent Cases and In The Global Business Environment.
Legislative Update
Trade Secret Protection in a Global Economy
What we learned about resolving IP disputes in an economic downturn and how to apply those lessons learned going forward.
Alternative Approaches to Reducing Patent Litigation Costs
Regional Patenting Authorities /NGOs
National Offi ces
Web 2.0 : Social networking & content
Blogs
Solutions ProvidersThe new frontier…
They are coming out of the woodwork…
INFORMATION MANAGEMENT * Manage contracts, including licensing, employment, NDAs, vendor agreements and more * Get a unified view of all commitments and liabilities and visibility to all incoming and outgoing obligations * Search, roll up, alert and report on expirations, renewals, warranties, indemnifications and annuity date * Generate contract reports linked to other factors, such as royalty payments related to a particular technology or all agreements with a particular outside firm * Complete view of your portfolio by integrating data from multiple docketing systems, databases, spreadsheets and other sources. It shows you the all-important relationships among people, assets, activities and organizations. The system generates alerts to keep the right people proactive about deadlines and obligations. And it gives users ultra-flexible reporting capability to extract exactly the information they need when they need it. It even keeps you up to date on technologies, competitors and information from IP offices.
WORKFLOW MANAGEMENT * Streamline workflow and facilitate repeatable processes, reducing contract management costs * Manage contract approval processes, whether serial or parallel
RISK MANAGEMENT * Maintain meticulous records and an audit trail of all contract-related activities to aid regulatory compliance * Ensure thorough, efficient due diligence by integrating information key to transactions and litigation * Monitor expense, royalty and other revenue-related agreements and issue alerts on missed payments or forecasts
“Full Service” Law Firms
IP Management ambulance chasers
A firm that helps schools set up patents for their discoveries and
assists in finding public companies looking to purchase
them. The company calls itself an intellectual property
matchmaker.
Technology Exchanges
Putting it Together…
• Use technology to make you an information literate IP manage– RSS feeds– Integrating social networking– Clipping services / Alerts (e.g. Wexis, Google,
Amazon…)• Use human beings– Join professional associations– Law librarians are trained to filter data to provide you
information
