Intellectual Property Strategies for the 21st Century Corporation :A Shift in Strategic and Financial Management

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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

Conclusion

Notes

CHAPTER 2: Electronic Discovery in Intellectual Property Cases

Electronic Discovery Process

Conclusion

Notes

CHAPTER 3: Controlling Patenting Costs

Defining the Objective

Deciding Where to File

Delaying Costs

Alternative Means of Protection

Proper Preparation

Logistics of Filing

PCT Formality Advantages

Avoiding Duplication of Effort

Prosecution Issues

Particular Issues in the United States

Particular Issues in the EPO

Particular Issues in Japan

Pruning the Portfolio

Licenses of Right

Conclusion

Notes

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

Conclusion

Notes

CHAPTER 5: Domain Names

An Overview of the Internet

Domain Names

Conclusion

Notes

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

Default

International Creation and Perfection of Security Interests

Conclusion

Notes

CHAPTER 7: Strategic and Legal View of Licensing Patents

Nomenclature

State of the Law

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

Royalty Audits

Conclusion

Notes

CHAPTER 8: Monetizing IP Rights: Licensing In and Out

Grant of Rights

Key Defined Terms

Quality Control

Term and Termination

Confidentiality

Managing Costs: Insurance, Indemnifications, Reps, and Warranties

Conclusion

Notes

CHAPTER 9: Working with Government

The Big Picture

Commercial or Noncommercial

Commercial Item

Changes to COTS Using Government Funding

Noncommercial Item

Noncommercial Item Development

Noncommercial Item Development Funding

Noncommercial Item License Rights to the Government

Noncommercial Item Doctrine of Segregability

Noncommercial Item Assertions Table

Marking

Deferred Ordering

Beware the Prototype

Inventions and Patents in Noncommercial Contract Effort

Noncommercial Item Effort Impact

Private Funding and Government Funding

Reuse Prohibitions

Treatment of Subcontractors

Outsourcing of Government Work

IP Owner’s Rights Relative to Government Activity

Conclusion

Notes

CHAPTER 10: Valuation, Monetization, and Disposition in Bankruptcy

IP and the Bankruptcy Context

Quality, Hierarchy, and Value

The Valuation Process

Value Extraction: Monetization and Disposition

Lessons: Due Diligence and Marketing

IP Monetization in the 21st Century

Conclusion

Notes

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

A Memorable Brand Name?

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

Conclusion

Notes

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)

Conclusion

Notes

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

Conclusion—The Future

Notes

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

Benefits and Drawbacks of Using Legal IP Interns

Employment Law Issues

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

Conclusion

Notes

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

Green Branding

Conclusion

Notes

CHAPTER 16: The Financial Reporting Impact of Intellectual Property Activity

IP Activity

Relevant IP Accounting Guidance

Accounting for IP Business Activities

Future Transition to International Financial Reporting Standards

Conclusion

Notes

About the Editors

About the Contributors

Index

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