1、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: 90-100% - Al
2、most 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
3、? 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 Under
4、stand 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
5、 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: Some
6、times 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,Ensur
7、e 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 Over
8、view 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 pri
9、or 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
10、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 spa
11、ce 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 bot
12、h? 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
13、 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
14、 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 indemn
15、ities in supplier agreements Utilize DMCA safe harbor protections Audit right to use 3rd party content including software,No clearance of brand or trademark search Registered theNewP Immediately hit with trademark C&D from NewP owner Not big patent filer in current technology area with no patents in
16、 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 anym
17、ore 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 NewP is competitor IP Assets: Patents on current technology Legal Solutions: Settle trademark infringement Rebrand with searched trad
18、emark & 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, mob
19、ile 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: Co
20、pyrights 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 sponsors co-branding C&D to trademark infringers DMCA takedown procedure,
