Auditing Your IP David Bradin Friday, February 4 © 2011 Hultquist IP. All rights reserved.

Slides:

Advertisements

Similar presentations

What is it? Intellectual Property Culture and Leadership 1. Promoting Creativity and Inventiveness 2. IP Vision i. Corporate IP Policy ii. Leading an.

Advertisements

Managing Intellectual Property Assets in International Business Anil Sinha, Counsellor, SMEs Division World Intellectual Property Organization (WIPO)

Patents and Intellectual Property by Kari Barnes

Industry Exploration Program (IEP) Brian D. Gildea, Esq. Executive Director, IP & Licensing.

Case study ---- Aquionics

By: Vihar R. Patel VRP Law Group, 201 E. Ohio Street, Suite 304, Chicago, IL P: , F: , Web:

1 The Use of Intellectual Property in Business Introduction to Intellectual Property Strategies –The intellectual property systems throughout the world.

VIEWS ON THE NEW INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY PROCEDURE (“MERGER OF PCT CHAPTERS I AND II”): ADVANTAGES, PROBLEMS AND FUTURE OPPORTUNITIES.

Patent Law A Career Choice For Engineers Azadeh Khadem Registered Patent Attorney November 25, 2008 Azadeh Khadem Registered Patent Attorney November 25,

Cooperative Research and Technology Enhancement (CREATE) Act By Paul Fleischut SENNIGER POWERS.

So you’ve invented something? A Guide for UMass Faculty, Researchers and Students.

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.

Intellectual Property Patent Primer Michael Pratt Executive Director, Business Development November 1, 2011.

1 Technology Assessment Committees – Choosing the Optimal Structure Varda N. Main Director, Technology Licensing Office LES 2004 Annual Meeting Boston,

® ® From Invention to Start-Up Seminar Series University of Washington The Legal Side of Things Invention Protection Gary S. Kindness Christensen O’Connor.

France: A Country on the Move Protecting your Intellectual Property Internationally.

Lauren MacLanahan Office of Technology Licensing GTRC.

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.

R OLE OF TRADEMARKS IN BRANDING PROTECTING TRADEMARKS AT HOME AND ABROAD SUNITA K. SREEDHARAN SKS LAW ASSOCIATES, NEW DELHI APRIL 5, 2010.

Types of Intellectual Property Patent Patent Trademarks Trademarks Copyright Copyright Trade Secrets Trade Secrets.

Cochran Law Offices, LLC Patent Procedures Presented by William W. Cochran.

© 2010 Hodgson Russ LLP IEEE Southern Area Entrepreneur’s Day Overview Of The Patent Process R. Kent Roberts Hodgson Russ LLP (716)

Chapter 25 Intellectual Property Copyright © 2015 McGraw-Hill Education. All rights reserved. No reproduction or distribution without the prior written.

Intellectual Property in the Context of Growth and Development of the World Economy Luciano Daffarra, Attorney at Law Daffarra, d’Addio & Partners China-Italy.

Patent Basics April 9, 2003 Fernandez & Associates LLP Stanford BioDesign Invention Challenge IP Lecture.

10/19/2011F. B. Bramwell1.  Thanks to conversations with: ◦ HU Office of General Counsel  John Gloster  Dan McCabe ◦ University of Kentucky Intellectual.

Page 1 IOP Genomics Workshop Patents and Patenting Biotech Inventions Annemieke Breukink, Ph.D. September 8th, 2009.

2011 Industry Sponsored Research Workshop INTELLECTUAL PROPERTY Michael Jaremchuk Associate Director CVIP Phone: FAX:

Opinions of Counsel A Litigator’s Perspective Rick Matthews Friday, February 4 © 2011 Hultquist IP. All rights reserved.

+ Faculty Orientation UAMS BioVentures September 23, 2015 Christopher A. Fasel Associate Director of Licensing Patent Attorney UAMS BioVentures.

Josiah Hernandez UPR Policy on IP. Whose Property is it? Under UPR’s policy (Cert. 132, ) the University owns IP that is generated through research.

© PEP 2005 All rights reserved “Connecting the Dots… from Researcher to Market” Harvesting the value of innovation Courtney Price, Ph.D.

The World Leader in High Performance Signal Processing Solutions Global Intellectual Property Protection December 2014 Jason Fiorillo Chief I.P. Counsel.

Protecting Your Software and Other Technology: Trademarks, Trade Secrets, Copyrights and Patents.

University Technology Transfer: Issues and Opportunities Mark Crowell Research Administration for Scientists (T. Quigg) 7 December 2001.

Establishing a Robust Due Diligence Process: Tips for Finding the Warts before Finalizing the Deal Patents and Other Intellectual Property Issues: Coverage.

Wolf, Greenfield & Sacks, P.C. | 600 Atlantic Avenue | Boston, Massachusetts | | fax | wolfgreenfield.com LEGAL & PATENT.

The Basics of Intellectual Property Law Understanding IP by A. David Spevack, Office of Naval Research.

DIS 605 BY DOROBIN AGOTI REG NO: D61/71443/2008 ICT INNOVATION, LEGAL AND PIRACY ISSUES.

IP Issues for Start Ups Lana Habash, Sanad Law Group in association with Eversheds KSLG October 19, 2011.

 2015 Lando & Anastasi, LLP Do Patents Matter? And other IP Issues and Opportunities Peter C. Lando February 21, 2015.

Intellectual Property Basics: What Rules Apply to Faculty, Staff, and Student Work Product? Dave Broome Vice Chancellor and General Counsel October 15,

Wyoming Research Products Center Technology Transfer and Licensing Senator Enzi’s Inventors Conference April 20, 2013 Phillip Wulf, Intellectual Property.

Nadya Reingand, PhD Yan Hankin, Esq. Washington DC, USA © Copyright. All rights reserved. Intellectual Property and Business Aspects of Digital Holography.

Lecture 27 Intellectual Property. Intellectual Property simply defined is any form of knowledge or expression created with one's intellect. It includes.

Introduction to Intellectual Property (IP) Download Copy from

Avoiding Common Pitfalls: Intellectual Property and Exports Guriqbal Singh Jaiya, Director, SMEs Division World Intellectual Property Organization (WIPO)

Fundamentals of Intellectual Property

An Overview of Intellectual Property by John Slaughter September 26, 2009 © John Slaughter All Rights Reserved.

Intellectual Property Guide WP4 delivrables Tristan Rouillé, Ifremer 19 / 20 April 2011.

1 © Constellation Capital Limited. All rights reserved. Developing and Exploiting Intellectual Property Workshop For each type of IP, identify.

[Business/Concept Name] [Presenter, Key Personnel] ***Remember as you draft your slides that there is a hard 12 minute stop on your presentation***

Recent Developments in Obtaining and Enforcing Intellectual Property Rights in Nanocomposites Michael P. Dilworth February 28, 2012.

Patent Applications Just the Frequently Asked Questions.

An introduction to Intellectual property protection TG © Copyright by Stevens Institute of Technology.

Developing an Intellectual Property Strategy Marie Jones Bank of America Asst. General Counsel, SVP CCWC Career Strategies Conference Sept. 21, 2016.

Technology Transfer Office

Technology Assessment Committees – Choosing the Optimal Structure

So you’ve invented something?

Intellectual Property for Startups

Managing Intellectual Property Assets in International Business

PATENT Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India.

Introduction Intellectual property includes the application of property in the areas of trade secrets, patents, trademarks, and copyrights.

Agreements OSR Symposium

What You Didn’t Know That You Didn’t Know About Patents

IP ISSUES IN LICENSING OF TECHNOLOGY IN THE ELECTRONICS INDUSTRY

Presentation transcript:

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.