Presented By: Kelley Clements Keller, Esq. A Strategic Approach to Identifying and Managing Valuable Intellectual Property Assets www.TheKellerLawFirm.com
Presented By: Kelley Clements Keller, Esq.
A Strategic Approach to Identifying and Managing
Valuable Intellectual Property Assets
www.TheKellerLawFirm.com
Business = Value
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Every company’s raison d'être is to
create, deliver, and capture value.
Business = Value
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Every company has knowledge, information, and ideas that are
integral to its ability to create, deliver, and capture that value.
That means you!
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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.
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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.
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Intellectual Property Regimes
STEP 1: Have a Basic Understanding of IP
Patents
Trademarks
Copyrights
Trade Secrets
Others, i.e. domain names, “know-how”
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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
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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
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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)
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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
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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
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Other Forms of IP
Domain Names / Internet Assets
“Know-How” Institutional knowledge
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Business Centric IP Strategies
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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.
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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)
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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
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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
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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
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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
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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
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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
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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
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Managing Your IP Assets
Leverage your IP assets to create financial value and increase recurring revenue streams
Licensing agreements Buy/sell agreements Strategic partnerships Joint development agreements
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Managing Your IP Assets
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
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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.
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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
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Thank You!
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Kelley Clements Keller, Esq.(717) 386-5035
[email protected]@KelleyKeller
/The KellerLawFirmLLC/KelleyKeller