Description
A practical approach to the modern management of intellectual property
The world has changed significantly in the past decade, resulting in new behavior and practice related to the ownership and management of intellectual property. This book helps executives, attorneys, accountants, managers, owners, and others understand the legal, technological, economic, and cultural changes that have affected IP ownership and management. It provides case studies, 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.
- Provides a practical yet global approach to corporate IP management
- Serves as a resource for in-house and outside counsel, executives, managers, accountants, consultants and others at mid-size and large corporations
- Helps professionals navigate the numerous new challenges that have changed the ways in which intellectual property is obtained and managed
- Details the latest trends in valuation, exploitation, and protection of intellectual property
- Extensive coverage of the legal, financial, accounting and general business aspects of intellectual property
- The combined expertise of lawyers, accountants, economists and other business professionals
Timely and relevant in view of the global economic recession amidst rampant technological development, this book offers new solutions, practices, policies and strategies as a result of changes in economies and markets, laws, globalization, environment, and public perception.
Chapter
CHAPTER 2: Electronic Discovery in Intellectual Property Cases
Electronic Discovery Process
CHAPTER 3: Controlling Patenting Costs
Alternative Means of Protection
Avoiding Duplication of Effort
Particular Issues in the United States
Particular Issues in the EPO
Particular Issues in Japan
CHAPTER 4: Trademark Costs: Trimming the Sails in Rough Economic Waters
Evaluating and Organizing a Trademark Portfolio
Selecting and Clearing a New Trademark
Filing and Pursuing Trademark Registrations
Using and Enforcing Trademark Rights
An Overview of the Internet
CHAPTER 6: Creating, Perfecting, and Enforcing Security Interests in Intellectual Property
U.S. Securitization of Intellectual Property
Perfection of Security Interests in Trademarks in the United States
Perfection of Security Interests in Patents in the United States
Perfection of Security Interests in U.S. Copyrights
Perfection of Security Interests in Domain Names
Attempts to Harmonize Perfection Laws in the United States as It Relates to Intellectual Property
International Creation and Perfection of Security Interests
CHAPTER 7: Strategic and Legal View of Licensing Patents
Basic Principles for Licensing
How Does One Go About Licensing Out Patents, and What Are Some Strategic Considerations?
Some Legal Considerations for a Patent Licensor
Strategic and Legal Considerations for a Patent Licensee
CHAPTER 8: Monetizing IP Rights: Licensing In and Out
Managing Costs: Insurance, Indemnifications, Reps, and Warranties
CHAPTER 9: Working with Government
Commercial or Noncommercial
Changes to COTS Using Government Funding
Noncommercial Item Development
Noncommercial Item Development Funding
Noncommercial Item License Rights to the Government
Noncommercial Item Doctrine of Segregability
Noncommercial Item Assertions Table
Inventions and Patents in Noncommercial Contract Effort
Noncommercial Item Effort Impact
Private Funding and Government Funding
Treatment of Subcontractors
Outsourcing of Government Work
IP Owner’s Rights Relative to Government Activity
CHAPTER 10: Valuation, Monetization, and Disposition in Bankruptcy
IP and the Bankruptcy Context
Quality, Hierarchy, and Value
Value Extraction: Monetization and Disposition
Lessons: Due Diligence and Marketing
IP Monetization in the 21st Century
CHAPTER 11: Outsourcing of Branding and Marketing
Brand Naming Project Dynamics
Brand Naming Compared to Reference Naming
The Descriptive Brand Name Problem
The Unique Brand Name Value
Common Misguided Brand Name Criteria
Six Criteria for Effective Brand Names
The Supporting Role of a Descriptive Phrase
The Graphic Realization of a Brand Name
The Value of Graphic Realizations
Comparing ‘‘Logotypes’’ and ‘‘Mark Plus Logotypes’’ for Brand Development Powers
The Criteria for Graphic Signature Effectiveness
Evolving Influence of the Internet on Brand Naming and Graphics
Digital Facilitation of Content
CHAPTER 12: Trademark Searches
The Trademark Search Process
Trademark Search and Risk
Use of a Professional Search Firm
Working with the Search Firm In-House or through Outside Counsel
Questions to Ask Before a Search Is Conducted
Information to Keep in Mind
Strength of Mark and Its Effect on the Search
What a Clearance Search Can Provide
Importance of Online Platform and Tools in Clearance
Online Screening Uses and Options
Comprehensive Search (United States and Canada)
Specialized Search Services
Global Search Options (non–United States and Canada)
CHAPTER 13: Investigations: Considerations for Selecting and Directing Outside Investigators
Why Hire Outside Investigators
What to Expect from Your Investigators
Special Considerations for Attorneys
How to Find IP Investigators
Other Services that Investigators Can and Should Be Able to Provide
International Investigations
CHAPTER 14: Model Intellectual Property Internship Programs: Internship Programs within the Scope of Employment Law
Benefits and Drawbacks of Using Legal IP Interns
Sources and Screening of Potential Interns
Structure of the Internship Program
Retaining and Maximizing the Benefits of Postinternship Relationships
A Model IP Law Internship Program
The Current Trend in Internship Programs
CHAPTER 15: Maximizing ‘‘Green’’ Brand Exposure and Minimizing Perceptions of Greenwashing
CHAPTER 16: The Financial Reporting Impact of Intellectual Property Activity
Relevant IP Accounting Guidance
Accounting for IP Business Activities
Future Transition to International Financial Reporting Standards