IP Assets on the Offensive: Arming Your IP for Corporate Strategic Battles Monday, October 17, 2016, 2:30 PM - 4:00 PM

Question #1: Your primary area of practice? A: Patents B: Trademarks C: Copyrights D: Oversee all IP E: None of the above

Question #2: Percentage of day spent on IP? A: % - Almost all B: Above 75% - Main task C: Above 50% - Major responsibility D: Above 25% - Part of many duties E: 0-25% - Only when I have to

What is strategic IP asset alignment? How is IP alignment central to general corporate strategy? What legal options are available to implement strategic initiatives? How can IP assets be positioned to ensure that strategic goals and initiatives are met? 4 typical scenarios in which strategic initiatives are issued from the C-suite

Strategic IP Asset Alignment Prerequisites: – Understanding corporate strategy and goals in market – Know competitive IP landscape – Understand most likely litigation scenarios and other risks from inadequate IP Guide short- and long-term IP procurement toward strategy and goals

Question #3: Do you ever perform IP landscape analysis? A: Regularly B: Sometimes C: Never

IP alignment is central to general corporate strategy IP litigation can often be “bet the company” IP trolls exploit poor IP execution Most valuable assets are often intangible and enhanced by IP Misalignment of IP procurement with corporate strategy is expensive

Question #4: Do you ever survey litigation activity as part of your client advice? A: Regularly B: Sometimes C: Never

Legal options available form implementation of strategic initiatives Domain name management Trademark procurement and enforcement Copyright management Patent procurement and enforcement Trade secret management

Question #5: Does your company have IP policies? A: Yes B: Some C: No

Ensure IP assets meet strategic goals and initiatives Analyze portfolios against goals Landscape analysis Fill holes through acquisition Policies, processes, procedures & ownership agreements

Question #6: Are you comfortable with the IP processes at your enterprise? A: Yes B: Somewhat C: No

Scenario Overview Generally: Executive-driven strategy drops on legal dept Assess the risks in execution of strategy Analyze current IP position Formulate plan to fill-gaps in IP Execute on plan

Scenario #1: Start-up company entering heavily patented consumer space Litigation is likely based upon analysis of prior entrants into market Strong brand is key to success with consumers Few developers want to engage in patent program New technology with limited experience in market

Question #7: Most troubling issue for scenario #1? A: Trademarks B: Patents C: Copyrights D: Trade Secrets E: No problems anymore as panel solved it

Scenario #1: Start-up company entering heavily patented consumer space Legal Issues: – No trademark protection – Need for strong brand – Patent portfolio paramount IP Assets: – None Legal Solutions: – Develop consumer brand with strong trademark protection – Explore freedom to operate in new space – Acquire or develop patent portfolio – Implement incentive program to encourage patents

Trademark that is weak and fast approaching genericide Weak controls over supply chain leading to counterfeiting and trademark infringement issues Is company a third party sales platform or a direct seller or both? Lax management of content used in connection with sales process (website images, control over third party use of images) Lax control of software (both use and development) – looming issues and possibility of license disputes and copyright infringement claims Scenario #2: Spin off an underperforming business unit with withering brand

Question #8: Most troubling issue of scenario #2? A: Trademarks B: Patents C: Copyrights D: Trade Secrets E: No problems anymore as panel solved it

Scenario #2: Spin off an underperforming business unit with withering brand Legal Issues: Poor trademark policing No trademark policy Trademark infringement/counterfeiting exposure IP Assets: Trademarks/Copyrights/Trade Secrets Legal Solutions: Implement trademark usage policy as well as a trademark policing and education program Terminate relationships with risky suppliers and ensure proper warranties and indemnities in supplier agreements Utilize DMCA safe harbor protections Audit right to use 3 rd party content including software

No clearance of brand or trademark search Registered theNewProduct.com Immediately hit with trademark C&D from NewProduct.com owner Not big patent filer in current technology area with no patents in new area Patent litigation rare among established competitors, but NPE litigation common Scenario #3: Company expands into a new tech-heavy consumer product space in a rush

Question #9: Most troubling issue for scenario #3? A: Trademarks B: Patents C: Copyrights D: Trade Secrets E: No problems anymore as panel solved it

Scenario #3: Company decides to expand into a new tech-heavy product space Legal Issues: – Poor brand strategy – Trademark infringement – Domain name NewProduct.com is competitor IP Assets: – Patents on current technology Legal Solutions: – Settle trademark infringement – Rebrand with searched trademark & matching domain – Patent landscape study to determine portfolio strategy – Litigation survey to determine likely patent assertions – Offensive patent filings & strategic patent aquisition to curtail NPE threat – File administrative challenges to bad patents

Insufficient brand protection Website, mobile app & social media presence Festival co-branded with sponsor name Domain squatting by mimic & so-called fan sites Disagree with prior enforcement strategy Content issues Scenario #4: Co-ownership – Festival Purchase

Question #10: Most troubling issue for scenario #4? A: Trademarks B: Patents C: Copyrights D: Trade Secrets E: No problems anymore as panel solved it

Scenario #4: Co-ownership – Festival Purchase Legal Issues: – Trademark protection – Enforcement strategy – Copyright infringement IP Assets: – Trademarks – Domain names – Third-party copyrights – Social media handles Legal Solutions: – Bring IP in-house or to favorite counsel – Contractually define sponsor’s co-branding – C&D to trademark infringers – DMCA takedown procedure