We think you have liked this presentation. If you wish to download it, please recommend it to your friends in any social system. Share buttons are a little bit lower. Thank you!
Presentation is loading. Please wait.
Published byKatelyn McCurdy
Modified over 3 years ago
Auditing Your IP David Bradin Friday, February 4 © 2011 Hultquist IP. All rights reserved.
INTELLECTUAL PROPERTY BASICS Patents Trademark/Service Marks Copyrights Trade Secrets © 2011 Hultquist IP. All rights reserved.
VALUE OF INTELLECTUAL PROPERTY Companies Without IP Have Little or No Barrier to Competition Companies With IP Have a Value Proposition Even if They Cannot Raise Enough Cash to Get to Bricks and Mortar Licensing Sale Merger © 2011 Hultquist IP. All rights reserved.
REASONS TO CONDUCT IP AUDITS Evaluate patent portfolio Consider protecting new inventions Fix identified problems Prepare an IP budget Identify properties to abandon (and save costs) Prepare portfolio for acquisition - Contrast with Due Diligence - Ideally, the IP portfolio is always in proper form for acquisition © 2011 Hultquist IP. All rights reserved.
WHO SHOULD PARTICIPATE IN AN IP AUDIT? Key Decision Makers Key Scientists General Counsel Intellectual Property Counsel Business Development © 2011 Hultquist IP. All rights reserved.
IMPORTANT ASPECTS OF AN IP AUDIT Verify IP ownership Consider whether commercially relevant subject matter is claimed, and if not, whether there is support for an amendment Consider whether desired foreign filings and continuation/divisional applications have been pursued Consider whether all relevant prior art has been cited Ensure that the inventorship is correct © 2011 Hultquist IP. All rights reserved.
FREQUENT DISCOVERIES IN AN IP AUDIT Claims do not cover commercial embodiments Foreign patent protection is inadequate Significant costs incurred for patent applications claiming commercially irrelevant technology Prior art was not cited Inventorship is incorrect New patent applications need to be filed © 2011 Hultquist IP. All rights reserved.
IP AUDITS OF BIOTECH/PHARMA COMPANIES New patentable subject matter may be identified following each significant event: - Lead generation/Lead optimization - Animal studies - Pre-clinical studies - Phase I - Phase II - Phase III © 2011 Hultquist IP. All rights reserved.
CONCLUSIONS Conduct periodic IP audits to ensure that your IP is in proper condition Involve key decision makers and outside patent counsel Use the IP audit as a budgeting tool Be ready for any business opportunity by making sure the IP is bulletproof © 2011 Hultquist IP. All rights reserved.
THANK YOU © 2011 Hultquist IP. All rights reserved.
Types of Intellectual Property Patent Patent Trademarks Trademarks Copyright Copyright Trade Secrets Trade Secrets.
© 2010 Hodgson Russ LLP IEEE Southern Area Entrepreneur’s Day Overview Of The Patent Process R. Kent Roberts Hodgson Russ LLP (716)
Managing Intellectual Property Assets in International Business Anil Sinha, Counsellor, SMEs Division World Intellectual Property Organization (WIPO)
DIS 605 BY DOROBIN AGOTI REG NO: D61/71443/2008 ICT INNOVATION, LEGAL AND PIRACY ISSUES.
1 © Constellation Capital Limited. All rights reserved. Developing and Exploiting Intellectual Property Workshop For each type of IP, identify.
What is it? Intellectual Property Culture and Leadership 1. Promoting Creativity and Inventiveness 2. IP Vision i. Corporate IP Policy ii. Leading an.
Opinions of Counsel A Litigator’s Perspective Rick Matthews Friday, February 4 © 2011 Hultquist IP. All rights reserved.
Wolf, Greenfield & Sacks, P.C. | 600 Atlantic Avenue | Boston, Massachusetts | | fax | wolfgreenfield.com LEGAL & PATENT.
Small Business Innovation Research (SBIR) Program for the UCI School of Medicine Patents and Intellectual Property by Kari Barnes.
Patent Law A Career Choice For Engineers Azadeh Khadem Registered Patent Attorney November 25, 2008 Azadeh Khadem Registered Patent Attorney November 25,
Cochran Law Offices, LLC Patent Procedures Presented by William W. Cochran.
® ® From Invention to Start-Up Seminar Series University of Washington The Legal Side of Things Invention Protection Gary S. Kindness Christensen O’Connor.
Intellectual Property and Technology Transfer Ron Huss, Ph.D., Associate Vice President of Research and Technology Transfer Michael Brignati, Ph.D., J.D.,
Copyright P.B.Bottino All rights reserved Paul Bottino, Executive Director (617) Mini-MBA in Entrepreneurship.
Lauren MacLanahan Office of Technology Licensing GTRC.
2011 Industry Sponsored Research Workshop INTELLECTUAL PROPERTY Michael Jaremchuk Associate Director CVIP Phone: FAX:
3-1 Patent, Trademark, and Copyright Patent, trademark, service marks, and copyrights provide a mean to promote new ideas and inventions and at the same.
The Basics of Intellectual Property Law Understanding IP by A. David Spevack, Office of Naval Research.
IP Issues for Start Ups Lana Habash, Sanad Law Group in association with Eversheds KSLG October 19, 2011.
BOEING is a trademark of Boeing Management Company. Copyright © 2010 Boeing. All rights reserved. Intellectual Property (IP) Basics December 3, 2010 Wayne.
2015 Lando & Anastasi, LLP Do Patents Matter? And other IP Issues and Opportunities Peter C. Lando February 21, 2015.
Case study ---- Aquionics Prepared by Chia-Yin Lee David Dai.
France: A Country on the Move Protecting your Intellectual Property Internationally.
Protecting Your Software and Other Technology: Trademarks, Trade Secrets, Copyrights and Patents.
By: Vihar R. Patel VRP Law Group, 201 E. Ohio Street, Suite 304, Chicago, IL P: , F: , Web:
Industry Exploration Program (IEP) Brian D. Gildea, Esq. Executive Director, IP & Licensing.
© PEP 2005 All rights reserved “Connecting the Dots… from Researcher to Market” Harvesting the value of innovation Courtney Price, Ph.D.
10/19/2011F. B. Bramwell1. Thanks to conversations with: ◦ HU Office of General Counsel John Gloster Dan McCabe ◦ University of Kentucky Intellectual.
Avoiding Common Pitfalls: Intellectual Property and Exports Guriqbal Singh Jaiya, Director, SMEs Division World Intellectual Property Organization (WIPO)
Developing an Intellectual Property Strategy Marie Jones Bank of America Asst. General Counsel, SVP CCWC Career Strategies Conference Sept. 21, 2016.
Patent Basics April 9, 2003 Fernandez & Associates LLP Stanford BioDesign Invention Challenge IP Lecture.
Establishing a Robust Due Diligence Process: Tips for Finding the Warts before Finalizing the Deal Patents and Other Intellectual Property Issues: Coverage.
Intellectual Property Patent Primer Michael Pratt Executive Director, Business Development November 1, 2011.
So you’ve invented something? A Guide for UMass Faculty, Researchers and Students.
1 The Use of Intellectual Property in Business Introduction to Intellectual Property Strategies –The intellectual property systems throughout the world.
Cooperative Research and Technology Enhancement (CREATE) Act By Paul Fleischut SENNIGER POWERS.
[Business/Concept Name] [Presenter, Key Personnel] ***Remember as you draft your slides that there is a hard 12 minute stop on your presentation***
Intellectual Property Basics: What Rules Apply to Faculty, Staff, and Student Work Product? Dave Broome Vice Chancellor and General Counsel October 15,
VIEWS ON THE NEW INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY PROCEDURE (“MERGER OF PCT CHAPTERS I AND II”): ADVANTAGES, PROBLEMS AND FUTURE OPPORTUNITIES.
Wyoming Research Products Center Technology Transfer and Licensing Senator Enzi’s Inventors Conference April 20, 2013 Phillip Wulf, Intellectual Property.
Intellectual Property Legal Implications. What is Intellectual Property? The product of creativity and intellectual endeavour Intellectual Property Rights.
Lecture 27 Intellectual Property. Intellectual Property simply defined is any form of knowledge or expression created with one's intellect. It includes.
An introduction to Intellectual property protection TG © Copyright by Stevens Institute of Technology.
INTELLECTUAL PROPERTY PROTECTION OFFICE OF PATENT COUNSEL March 16, 2001.
Introduction to Intellectual Property (IP) Download Copy from
Intellectual Property What is intellectual property? What is intellectual property? US IP protection- US IP protection- Patent application process Patent.
PROTECTING INVESTMENT THROUGH IP David Fry Agile IP LLP.
Educational Research Retreat: When to Publish, Patent or Protect a “Trade Secret” P. Gunnar Brolinson, DO, FAOASM, FACOFP, FAAFP Vice Provost for Research.
1 1 1 AIPLA American Intellectual Property Law Association USPTO Updates Including Glossary Pilot Program Chris Fildes Fildes & Outland, P.C. IP Practice.
© 2017 SlidePlayer.com Inc. All rights reserved.