Development and Managementof an

IP Portfolio

.Ross A. Epstein

TechLaw LLPLunch and Learn

UCI Innovation CenterSeptember 23, 2016

Why Me?

Ross Epstein, Managing Partner, TechLaw LLP, a unique IP and Business Boutique

Five Years in Business Litigation in San Diego

Nine Years as Telecom Entrepreneur in Eastern Europe

Provide Advice and Counsel on All Aspects of IP and Transactional Matters

Agenda

What is IP?

Developing an IP Portfolio

Managing an IP Portfolio

CONVERTINFORMATION

TOADVANTAGE

What is an Intellectual Property Right?

PatentsTrademarksCopyrightsTrade Secrets

What is a Patent?

The right to exclude, not to use

For 20 years

An Intangible Asset

A tool for defining markets

What is Patentable?

Compositions of MatterDevicesProcesses (especially

manufacturing)Improvements

Examples

New Molecule for Clearing AirNew Abdominal Exercise

MachineNew Way of Manufacturing

MicrochipsBetter Way Of Regulating

Resistance on Ab Machine

Trademarks

Protects use of a mark on goods or services in commerce

Difference Between ® and TM or SM

Any word, symbol, color, sound, packaging

Scope of rights defined by breadth of description

Examples

Word MarkWord Plus DesignLogo onlySound

Copyrights

Any work of authorship fixed in tangible form

Life plus 70 years for people – Current Rule- Different rules apply to publications before 1977

Music, art, film, sculpture, architecture, hull designs, software, books, dance

ExamplesPhoto of a SunsetComputer codeLyrics for a SongMelody for the SongCombination of Lyrics and Song

Trade Secrets

Any information, which gives a business advantage, for which reasonable measures have been taken to keep it secret, and is not generally known

Private remedy in State Court only

Can last indefinitely

ExamplesCompilationsFormulasDevicesPatternsIdeasProcesses

Developing an IP Portfolio

Developing an IP Culture

IP awareness – EducationProcesses and ProceduresIncentive ProgramsBest Practices in LabsSecrecy/Confidentiality

Trade Secret Protection

Internal controls needed to prove up trade secret status

Treat as secretEmployee handbook and

agreements Common law right so no filing

opportunity

Patent Protection Procedures

Determine an invention worth protecting

Prior art searchingProvisional vs. Non-Provisional

Application

Copyright Protection Procedures

Mark your copyrighted materials*File a copyright applicationWithout a Registration, cannot

enforce in the US

*Development and Management of an IP Portfolio © 2016

Ross Epstein

Trademark Protection Procedures

Name business, product or serviceDetermine if eligible for

trademark protectionMark your marks – TM or ®File a trademark application – Use

or Intent to Use

Managing an IP Portfolio

Technical Considerations

International RightsCost of Maintaining/Prosecuting

both US and ForeignDirection of Technology (Patents)Branding strategies (Trademarks)

IP Business StrategiesCompetitive AdvantageCross-licensingEntry & Development of Export MarketsLicensing RoyaltiesTax AdvantagesForeign ManufactureBasis for Enterprise ValuationM&A Opportunities

Summary

Developing an IP Portfolio Requires an Understanding of What IP Assets are and How They Benefit the Business

Managing an IP Portfolio Is How a Business Generates Value From its IP Portfolio

Thank You

www.techlawllp.com

TechLaw LLP6265 Greenwich Drive, Suite 201San Diego, CA 92122

Tel. (888) 989-8529 ext. 88Fax (858) 430-3482

ross@techlawllp.com