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Legal Imperatives On Intellectual Property Management

Published by: IncreMental Advantage

Published: Jan. 30, 2007 - 111 Pages


Table of Contents


I. The Role of IP in Mergers & Acquisitions: Gary Abelev, Partner, Dorsey & Whitney LLP

II. Licensing Imperatives for Life Sciences Companies: Hollie Baker, Partner, WilmerHale

III. Protecting Your Brand By Protecting Your Trademarks:

Elliott C. Bankendorf, Principal, Welsh & Katz Ltd.

IV. How Entrepreneurial Companies Can Best Package Their IP In Anticipation Of An

Acquisition: Robert Barrett, Member, Bell, Boyd and Lloyd LLC

IV. The Strategic Protection of Trade Secrets is Smart Business:

Stephen E. Baskin, Partner, Kirkpatrick Stockton LLP

V. Intellectual Property Securitization: Ronald S. Borod, Brown Rudnick Berlack Israels LLP

Don Davis, CommercialStrategy, LLC

VI. Business Methods Patents: Brian J. Colandreo, Senior Counsel, Holland & Knight LLP

VII. The Intersection of Intellectual Property and Employment Law:

Adam Forman, Partner, Littler Mendelson, PC

VIII. Intellectual Property Management - When to sell, license and retain Intellectual Property:

Steve Frank, Partner, Goodwin Procter LLC

IX. Patent Assertion: Alan Grimaldi, Partner, Howrey LLP

X. Willful Infringement of Patents in Licensing Negotiations:

David Killough, Partner, Vinson & Elkins

XI. The Impact of Patent Quality: The Honorable Bruce Lehman, Senior Counsel,

Akin Gump Strauss Hauer & Feld & Former Commissioner of the Office of Patent and Trademarks and contributing interviewer, Bruce Berman, President of Brody Berman Associates, Inc.

XII. Blocking Strategies for Intellectual Property: Ira Levy, Partner, Goodwin & Procter LLP

XIII. Trade Secrets Litigation: William Parrish, Shareholder, Jenkins & Gilchrist

XIV. Financing IP Litigation: Ronald J. Schutz, Attorney, Robins, Kaplan, Miller & Ciresi LLP

XV. When Should Young Companies Pursue Patents? When Should They Maintain Trade Secrets?:

Diana M. Steel, Counsel, Sullivan & Worcester LLP

XVI. Insights into Trademark and Copyright Infringement and False Advertising:

Perry Viscounty, Partner, Latham & Watkins

XVII. Defending the Worldwide Patent System is Akin to Hercules Battling Hydra: David Wanetick,

Managing Director, IncreMental Advantage

XVIII. The Importance of Intellectual Property Due Diligence in Context of Mergers & Acquisitions:

David Wanetick, Managing Director, IncreMental Advantage

XIX. Defending Your Intellectual Property Through Defensive Publication: David Wanetick,

Managing Director, IncreMental Advantage

Abstract

Only in recent decades have issues related to the protection of intellectual property rights come to be seen as significant sources of legal and business uncertainty. In part, this uncertainty derives from the fact that intellectual property is importantly different from physical property. Intellectual property can be stolen by an act as simple as broadcasting an idea without the permission of the originator." -- Former Federal Reserve Chairman Allan Greenspan in his remarks at a 2004 conference on Economic Policy Research, at Stanford University

The business landscape is littered with intellectual property landmines. Microsoft, Apple Computer, Sun Microsystems, Medtronic, Research in Motion and Nintendo are just a few of the companies that have settled patent infringement disputes for hundreds of millions of dollars. Toshiba paid a $425 million judgment to Lexar for violating trade secrets. Pfizer's patents for Viagra were ruled invalid in China and Microsoft faces similar concerns over its Office product in South Korea. In the battle of protecting intellectual property, the IP lawyer is on the front lines. It is the IP lawyer who:
  • Drafts the patent applications, knowing that the defensibility of the firm's intellectual capital hangs on each word that the IP lawyer crafts.
  • Must have the prescience to secure valuable IP rights throughout the world in anticipation of his company later doing business in remote markets.
  • Must defend his company against attacks by patent trolls.
  • Must have the business savvy to transform fierce litigation into mutually beneficial licensing agreements.
  • Must retain patent, trademark, and copyright exclusivity while avoiding anti-trust challenges.
This report includes interviews with many of the nation's foremost authorities on the intellectual property law. Intellectual Property Litigation is extremely expensive and becoming increasingly common. From 1984 to 1999, the mean loss absorbed by companies faced with IP litigation was $28.7 million in total losses. Microsoft, Apple Computer, Sun Microsystems, Medtronic, Research in Motion and Nintendo are just a few of the companies that have settled patent infringement disputes for hundreds of millions of dollars. Cisco Systems reports that it is named as a defendant in at least one IP lawsuit each week. IncreMental Advantage Publishing is proud to release its unique report on Legal Imperatives on Intellectual Property Management.

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