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Intellectual Property Operations and Implementation in the 21st Century Corporation

ISBN: 978-1-118-07587-6
316 pages
November 2011
Intellectual Property Operations and Implementation in the 21st Century Corporation (1118075870) cover image

Description

A practical approach to corporate IP operations and implementation

Intellectual Property Operations and Implementation helps executives, attorneys, accountants, managers, and owners, understand the legal, technological, economic, and cultural changes that have affected corporate IP ownership and management.

Page by page, it provides practical examples and advice from seasoned and enduring professionals who have adopted new and streamlined methods and practices whether as in-house or outside counsel, or service providers.

  • Timely and relevant in view of the substantially global economic recession amidst rampant technological development and the resulting changes in law, practice, and culture
  • Examines the decision making processes, activities, and changes of significant corporate intellectual property owners in today's new economy

Important and timely, this book provides a global approach to corporate IP management.

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Table of Contents

Preface xiii

Acknowledgments xix

CHAPTER 1 Conflicts: Causes, Prevention, and Controlling Counterfeiting 1

In-House Enforcement Strategies on the Internet 2

Partnering with Outside Legal Counsel 6

Conclusion 11

Notes 12

CHAPTER 2 Electronic Discovery in Intellectual Property Cases 15

Electronic Discovery Process 16

Conclusion 31

Notes 31

CHAPTER 3 Controlling Patenting Costs 37

Defining the Objective 37

Deciding Where to File 39

Delaying Costs 42

Alternative Means of Protection 42

Proper Preparation 45

Logistics of Filing 47

PCT Formality Advantages 49

Avoiding Duplication of Effort 50

Prosecution Issues 51

Particular Issues in the United States 52

Particular Issues in the EPO 53

Particular Issues in Japan 54

Pruning the Portfolio 54

Licenses of Right 54

Conclusion 56

Notes 56

CHAPTER 4 Trademark Costs: Trimming the Sails in Rough Economic Waters 61

Evaluating and Organizing a Trademark Portfolio 63

Selecting and Clearing a New Trademark 66

Filing and Pursuing Trademark Registrations 71

Using and Enforcing Trademark Rights 79

Conclusion 80

Notes 80

CHAPTER 5 Domain Names 85

An Overview of the Internet 85

Domain Names 86

Conclusion 98

Notes 99

CHAPTER 6 Creating, Perfecting, and Enforcing Security Interests in Intellectual Property 103

U.S. Securitization of Intellectual Property 104

Perfection of Security Interests in Trademarks in the United States 107

Perfection of Security Interests in Patents in the United States 109

Perfection of Security Interests in U.S. Copyrights 110

Perfection of Security Interests in Domain Names 112

Attempts to Harmonize Perfection Laws in the United States as It Relates to Intellectual Property 112

Default 113

International Creation and Perfection of Security Interests 114

Conclusion 116

Notes 117

CHAPTER 7 Strategic and Legal View of Licensing Patents 121

Nomenclature 122

State of the Law 124

Basic Principles for Licensing 125

How Does One Go About Licensing Out Patents, and What Are Some Strategic Considerations? 127

Some Legal Considerations for a Patent Licensor 132

Strategic and Legal Considerations for a Patent Licensee 133

Royalty Audits 133

Conclusion 134

Notes 136

CHAPTER 8 Monetizing IP Rights: Licensing In and Out 139

Grant of Rights 140

Key Defined Terms 141

Quality Control 143

Term and Termination 144

Confidentiality 146

Managing Costs: Insurance, Indemnifications, Reps, and Warranties 147

Conclusion 148

Notes 148

CHAPTER 9 Working with Government 151

The Big Picture 152

Commercial or Noncommercial 154

Commercial Item 154

Changes to COTS Using Government Funding 154

Noncommercial Item 155

Noncommercial Item Development 156

Noncommercial Item Development Funding 157

Noncommercial Item License Rights to the Government 157

Noncommercial Item Doctrine of Segregability 158

Noncommercial Item Assertions Table 159

Marking 160

Deferred Ordering 160

Beware the Prototype 161

Inventions and Patents in Noncommercial Contract Effort 161

Noncommercial Item Effort Impact 162

Private Funding and Government Funding 163

Reuse Prohibitions 163

Treatment of Subcontractors 164

Outsourcing of Government Work 164

IP Owner’s Rights Relative to Government Activity 165

Conclusion 165

Notes 165

CHAPTER 10 Valuation, Monetization, and Disposition in Bankruptcy 169

IP and the Bankruptcy Context 169

Quality, Hierarchy, and Value 171

The Valuation Process 172

Value Extraction: Monetization and Disposition 176

Lessons: Due Diligence and Marketing 178

IP Monetization in the 21st Century 179

Conclusion 180

Notes 180

CHAPTER 11 Outsourcing of Branding and Marketing 183

Brand Naming Project Dynamics 184

Brand Naming Compared to Reference Naming 185

The Descriptive Brand Name Problem 186

The Unique Brand Name Value 187

A Memorable Brand Name? 187

Common Misguided Brand Name Criteria 188

Six Criteria for Effective Brand Names 189

The Supporting Role of a Descriptive Phrase 191

The Graphic Realization of a Brand Name 192

The Value of Graphic Realizations 193

Comparing ‘‘Logotypes’’ and ‘‘Mark Plus Logotypes’’ for Brand Development Powers 194

The Criteria for Graphic Signature Effectiveness 196

Evolving Influence of the Internet on Brand Naming and Graphics 198

Digital Facilitation of Content 199

Conclusion 199

Notes 200

CHAPTER 12 Trademark Searches 203

The Trademark Search Process 204

Trademark Search and Risk 206

Use of a Professional Search Firm 207

Working with the Search Firm In-House or through Outside Counsel 208

Questions to Ask Before a Search Is Conducted 211

Information to Keep in Mind 215

Strength of Mark and Its Effect on the Search 216

What a Clearance Search Can Provide 219

Importance of Online Platform and Tools in Clearance 221

Online Screening Uses and Options 222

Comprehensive Search (United States and Canada) 224

Specialized Search Services 224

Global Search Options (non–United States and Canada) 225

Conclusion 228

Notes 229

CHAPTER 13 Investigations: Considerations for Selecting and Directing Outside Investigators 231

Why Hire Outside Investigators 232

What to Expect from Your Investigators 237

Special Considerations for Attorneys 240

How to Find IP Investigators 243

Other Services that Investigators Can and Should Be Able to Provide 244

International Investigations 246

Conclusion—The Future 248

Notes 248

CHAPTER 14 Model Intellectual Property Internship Programs: Internship Programs within the Scope of Employment Law 251

Benefits and Drawbacks of Using Legal IP Interns 251

Employment Law Issues 252

Sources and Screening of Potential Interns 254

Structure of the Internship Program 255

Retaining and Maximizing the Benefits of Postinternship Relationships 257

A Model IP Law Internship Program 258

The Current Trend in Internship Programs 259

Conclusion 259

Notes 259

CHAPTER 15 Maximizing ‘‘Green’’ Brand Exposure and Minimizing Perceptions of Greenwashing 263

Green Branding 264

Conclusion 278

Notes 279

CHAPTER 16 The Financial Reporting Impact of Intellectual Property Activity 291

IP Activity 291

Relevant IP Accounting Guidance 292

Accounting for IP Business Activities 296

Future Transition to International Financial Reporting Standards 303

Conclusion 304

Notes 304

About the Editors 307

About the Contributors 309

Index 313

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Author Information

LANNING G. BRYER is a Partner in the New York office of Ladas & Parry LLP and is Director of the firm's Mergers, Acquisitions, and Licensing Group. He is coauthor of Intellectual Property Assets in Mergers and Acquisitions, published by Wiley.

SCOTT J. LEBSON is a Partner in the Mergers, Acquisitions, and Licensing Group of Ladas & Parry LLP, focusing primarily on counseling clients with respect to the acquisition, sale, licensing, and securitization of intellectual property rights and related technology.

MATTHEW D. ASBELL is an Associate in the New York office of Ladas & Parry LLP, primarily practicing in the area of domestic and international trademark law.

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