a strategic approach to identifying and managing valuable intellectual property assets

Presented By: Kelley Clements Keller, Esq.

A Strategic Approach to Identifying and Managing

Valuable Intellectual Property Assets

www.TheKellerLawFirm.com

Business = Value

* Images may be subject to copyright by a third party.


Every company’s raison d'être is to

create, deliver, and capture value.

Business = Value



Every company has knowledge, information, and ideas that are

integral to its ability to create, deliver, and capture that value.

That means you!


http://www.rtitech.com/index.asp

Knowledge, Information, Ideas

Collectively, this knowledge, information, and bank of ideas comprise your company’s intellectual property assets.

These assets, which are the product of human intellect, imagination, creativity, and inventiveness, are created by you and your employees and exist throughout your entire organization.

Although these assets are intangible, they have identifiable marketplace value.



Why Do We Care?

Why does this matter?

Pain points that impact businesses

Strategically Financially Personally

A business centric IP strategy can help you lessen the pain and reduce attendant fear.



Intellectual Property Regimes

STEP 1: Have a Basic Understanding of IP

Patents

Trademarks

Copyrights

Trade Secrets

Others, i.e. domain names, “know-how”



Patents

Protect useful inventions, or improvements thereof

Inventor must make full disclosure, including “best mode” for carrying out invention

In return, inventor receives the exclusive right to make, use, and sell for a limited period of time

(20 years from date of filing for utility patents)

Goal is to encourage innovation and product development



Trademarks and Trade Dress

Protect unique words, names, symbols, logos, and some forms of product design and packaging, that identify the source of goods and services; rights arise from use in commerce

Federal protection available when mark is in use in interstate commerce

May be protected in perpetuity so long as the mark remains in use



Copyrights

Protect the original expression of an idea

Automatic protection upon fixation in tangible medium; federal registration confers numerous presumptions

Current Term is Life of Author + 70 Years (Extended in 1998 – Sonny Bono Copyright Term Extension Act)



Copyrights

Copyrighted content is always owned by the Author unless work was created within the scope of employment or there is a written agreement to contrary, i.e. Work Made for Hire

Copyright has made a concerted effort to keep up with media changes, including software development, but there remain numerous challenges posed by the ubiquity of the Internet and explosion of social media



Trade Secrets

Protect confidential processes, techniques, or methods used for advantage in a trade or business, e.g. recipe for Coca-Cola®

Protected by contracts: Non-disclosure agreements Confidentiality agreements

Subject matter: Proprietary information with independent economic value that, if stolen, would cause economic harm to the owner



Other Forms of IP

Domain Names / Internet Assets

“Know-How” Institutional knowledge



Business Centric IP Strategies



STEP 2: Understand How to Identify and Protect It

Consider your company’s value proposition, the most important part of your business model, when thinking about the role of IP in your company.

Does it provide a means to identify your company’s intellectual property assets;

a procedure for protecting your IP assets through proper legal regimes; and

a way to manage them in a way that creates value for you, your customers, and your bottom line.

Identify and Protect IP Assets

Think broadly when identifying assets.

Identify the full range of your assets.

Fully recognize of the value of your assets in the marketplace.

Properly protect those assets that need to be protected through legal regimes.



Company Wide Presence

IP assets are lurking throughout your company.

Marketing Department

Management and Human Resources

Finance and Accounting

Information Technology

Research and Development (R&D)



Marketing Department

Forms of IP Usually Present: Names, slogans, logos, advertisements,

brochures, pamphlets, ad copy under development, lists/databases of customers and prospects, and content for social media pages

Methods of Protection: Trademark Copyright Trade Secret



Management and HR

Forms of IP Usually Present: Recruiting brochures, employee handbooks,

proprietary forms and checklists, written training materials, and company newsletters

Methods of Protection: Copyright Trade Secret



Finance and Accounting

Forms of IP Usually Present: Contractual forms, presentation material

describing the company’s financial performance, written methodologies explaining how the company handles its finances, and employee pay records

Methods of Protection: Copyright Trade Secret



Information Technology

Forms of IP Usually Present: Web site design, domain names, company-

specific training manuals for computer equipment and software, original computer code, email lists name registry

Methods of Protection: Copyright Trade Secret Domain Names



Research and Development

Forms of IP Usually Present: New and useful inventions, business processes,

improvements to existing inventions and processes, and laboratory notes documenting invention discovery dates and charting the progress on various projects

Methods of Protection: Patent Trade Secret



Manage Your IP Assets

STEP 3: Understand How to Manage Your IP So That is Creates Value for You

Steer Clear of Infringing Other’s IP

Leverage your IP assets to create financial value and increase recurring revenue streams

Maintain a comprehensive portfolio of IP assets and the intangibles that travel alongside them


Managing Your IP Assets

Steer Clear of Infringement Can be extremely expensive

litigation costs, injunctions, damage awards Potential to put your business “out-of-business”

both innocent and willful infringement may be actionable




Leverage your IP assets to create financial value and increase recurring revenue streams

Licensing agreements Buy/sell agreements Strategic partnerships Joint development agreements




Maintain a comprehensive portfolio of your IP assets and other intangibles that travel with them

Coupling your IP and other intangibles will help to drive value in your IP portfolio

Bundle and Group Intangible Assets So They Are Easier to Manage



Back to the Beginning

How can a business centric IP-strategy address your pain points?

Strategic Fears• Identifying and managing your IP will keep you on track

to grow and/or sell your business – maintain a portfolio

Financial Fears• You have the risk of losing significant revenue if you fail to

enforce your IP and/or ignore opportunities to leverage it.

Personal Fears• Increase your security in your company and validate your

value proposition.


Importance of Intellectual Property

Our reliance on owning our creativity still remains strong.

“There is so much in our economy that is linked to branded products,

patented products, copyrights. So much of our economy thrives on creativity.”

--former U.S. Secretary of Commerce Carlos Gutierrez



Thank You!


Kelley Clements Keller, Esq.(717) 386-5035

[email protected]@KelleyKeller

/The KellerLawFirmLLC/KelleyKeller

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