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Setting up an Intellectual Property Asset Management Council by Michael H. Jacobs, Esq.

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Presentation on theme: "Setting up an Intellectual Property Asset Management Council by Michael H. Jacobs, Esq."— Presentation transcript:

1 Setting up an Intellectual Property Asset Management Council by Michael H. Jacobs, Esq. mjacobs@crowell.com

2 page 2 Why Should a Company Seek to Protect IP? Freedom to Operate Protection of Core Technologies (Including Right to Exclude Competitors) Licensing and Royalty Benefits Enhancing Reputation as a Technology Company Enhance “Brand”

3 page 3 Why Steps Should a Company Take? Physical Security Employee Agreements Contracts Education IP Procurement Program

4 page 4 What Is Needed for a Procurement Program? Management and Legal Department Support Infrastructure –Invention Disclosure Forms –Staffing –Incentive Program Intellectual Property Asset Management (IPAM) Council

5 page 5 What Is an IPAM Council? Team Tasked with Reviewing Invention Disclosures Submitted by Employees Authorized by Management and Legal to Approve or Reject Disclosures Two Major Roles –Gatekeeper (as discussed above) –Spokespeople for Program

6 page 6 Who Should Be on an IPAM Council? Representative from Legal –Preferably Registered Patent Attorney Representative from Various Business Units –Include Major Technology Areas –Don’t Forget Other Groups Level of Technical Skill –Don’t Just Include “Techies” Enthusiasm and Commitment

7 page 7 How Should an IPAM Council Be Run? Ground Rules –Set by Management/Legal Chair –Preferably from Legal Voting System –Approve –Reject –Send Back for More Information

8 page 8 The Importance of Enthusiasm Technical Skills and Management Level Important More Importantly, Members Should Be Sold on and Willing to Sell Program

9 Setting up an Intellectual Property Asset Management Council by Michael H. Jacobs, Esq. mjacobs@crowell.com


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