Intellectual Property Operations and Implementation in the 21st - Century Corporatio

Informationen zum Autor LANNING G. BRYER is a Partner in the New York office of Ladas & Parry LLP and is Director of the firm's Mergers, Acquisitions, and Licensing Group. He is coauthor of Intellectual Property Assets in Mergers and Acquisitions, published by Wiley.SCOTT J. LEBSON is a Partner in the Mergers, Acquisitions, and Licensing Group of Ladas & Parry LLP, focusing primarily on counseling clients with respect to the acquisition, sale, licensing, and securitization of intellectual property rights and related technology.MATTHEW D. ASBELL is an Associate in the New York office of Ladas & Parry LLP, primarily practicing in the area of domestic and international trademark law. Klappentext Praise forintellectual property operations and implementation in the 21st century corporation"Intellectual Property Operations and Implementation in the 21st Century Corporation should become the SOP manual or mandatory training guide for all new in-house intellectual property practitioners, as it provides a panoramic view of the issues you will likely face when building and maintaining a company's IP portfolio. I see this publication having a real benefit for those lawyers constantly bombarded by clients questions on the intellectual property surrounding protection, licensing, government funding, and bankruptcy issues that are of concern to their business unit. This area of law often is frequently checkered with complex issues, and this publication does a nice job in simplifying those issues into discrete areas with annotations to recent case law and statutes in the ever-changing IP field. This easy-to-read publication will become an important reference for those practitioners seeking the current landscape on the operations and implementation in the area of intellectual property law."-Susan E. McGahan, General Attorney, IP Law, AT&T"Intellectual Property Operations and Implementation in the 21st Century Corporation is a practical and insightful guide to maximizing the value of significant corporate IP portfolios, providing in-house counsel with comprehensive strategies to protect and enhance one of their corporation's most important assets-their intellectual property. The book tackles new and evolving areas in IP such as working with the government and appropriately maximizing 'green' brand exposure. An immensely valuable resource."-Anne Foulkes, Assistant General Counsel and Corporate Secretary, PPG Industries"In-house legal departments are under increased pressure to find cost-effective and timely ways to deliver services, operationalize legal processes, and maximize company value-particularly from intellectual property. Bryer, Lebson, and Asbell have provided corporate attorneys and in-house practitioners a practical guide to help identify core issues and manage a global IP program: from developing a patent strategy to focusing a brand management program; from establishing security interest in IP to selling it off during bankruptcy; and from considering domain registration costs to demystifying the Federal Acquisition Regulations (FARs) when entering into a license with the government. This book will help you save time and money, will make you more effective, and will quickly become one of the most used books in your office."-Vincent Cogan, Corporate Counsel, SVB Financial Group"If you have ever been curious as to the legal issues affecting corporate IP attorneys, this book is the key.?? Intellectual Property Operations and Implementation in the 21st Century Corporation is for every member of all departments in your corporation, offering well rounded case studies in global corporate intellectual property practice and protection.??The book includes excellent illustrations, checklists, action plans, and road maps for monetizing your company's current IP as well as addressing the prospective purchase and licensing of IP. The best of corporate intellectual property in 336 pages."-David Postolski, ...

List of contents

Preface xiiiAcknowledgments xixCHAPTER 1 Conflicts: Causes, Prevention, and Controlling Counterfeiting 1In-House Enforcement Strategies on the Internet 2Partnering with Outside Legal Counsel 6Conclusion 11Notes 12CHAPTER 2 Electronic Discovery in Intellectual Property Cases 15Electronic Discovery Process 16Conclusion 31Notes 31CHAPTER 3 Controlling Patenting Costs 37Defining the Objective 37Deciding Where to File 39Delaying Costs 42Alternative Means of Protection 42Proper Preparation 45Logistics of Filing 47PCT Formality Advantages 49Avoiding Duplication of Effort 50Prosecution Issues 51Particular Issues in the United States 52Particular Issues in the EPO 53Particular Issues in Japan 54Pruning the Portfolio 54Licenses of Right 54Conclusion 56Notes 56CHAPTER 4 Trademark Costs: Trimming the Sails in Rough Economic Waters 61Evaluating and Organizing a Trademark Portfolio 63Selecting and Clearing a New Trademark 66Filing and Pursuing Trademark Registrations 71Using and Enforcing Trademark Rights 79Conclusion 80Notes 80CHAPTER 5 Domain Names 85An Overview of the Internet 85Domain Names 86Conclusion 98Notes 99CHAPTER 6 Creating, Perfecting, and Enforcing Security Interests in Intellectual Property 103U.S. Securitization of Intellectual Property 104Perfection of Security Interests in Trademarks in the United States 107Perfection of Security Interests in Patents in the United States 109Perfection of Security Interests in U.S. Copyrights 110Perfection of Security Interests in Domain Names 112Attempts to Harmonize Perfection Laws in the United States as It Relates to Intellectual Property 112Default 113International Creation and Perfection of Security Interests 114Conclusion 116Notes 117CHAPTER 7 Strategic and Legal View of Licensing Patents 121Nomenclature 122State of the Law 124Basic Principles for Licensing 125How Does One Go About Licensing Out Patents, and What Are Some Strategic Considerations? 127Some Legal Considerations for a Patent Licensor 132Strategic and Legal Considerations for a Patent Licensee 133Royalty Audits 133Conclusion 134Notes 136CHAPTER 8 Monetizing IP Rights: Licensing In and Out 139Grant of Rights 140Key Defined Terms 141Quality Control 143Term and Termination 144Confidentiality 146Managing Costs: Insurance, Indemnifications, Reps, and Warranties 147Conclusion 148Notes 148CHAPTER 9 Working with Government 151The Big Picture 152Commercial or Noncommercial 154Commercial Item 154Changes to COTS Using Government Funding 154Noncommercial Item 155Noncommercial Item Development 156Noncommercial Item Development Funding 157Noncommercial Item License Rights to the Government 157Noncommercial Item Doctrine of Segregability 158Noncommercial Item Assertions Table 159Marking 160Deferred Ordering 160Beware the Prototype 161Inventions and Patents in Noncommercial Contract Effort 161Noncommercial Item Effort Impact 162Private Funding and Government Funding 163Reuse Prohibitions 163Treatment of Subcontractors 164Outsourcing of Government Work 164IP Owner's Rights Relative to Government Activity 165Conclusion 165Notes 165CHAPTER 10 Valuation, Monetization, and Disposition in Bankruptcy 169IP and the Bankruptcy Context 169Quality, Hierarchy, and Value 171The Valuation Process 172Value Extraction: Monetization and Disposition 176Lessons: Due Diligence and Marketing 178IP Monetization in the 21st Century 179Conclusion 180Notes 180CHAPTER 11 Outsourcing of Branding and Marketing 183Brand Naming Project Dynamics 184Brand Naming Compared to Reference Naming 185The Descriptive Brand Name Problem 186The Unique Brand Name Value 187A Memorable Brand Name? 187Common Misguided Brand Name Criteria 188Six Criteria for Effective Brand Names 189The Supporting Role of a Descriptive Phrase 191The Graphic Realization of a Brand Name 192The Value of Graphic Realizations 193Comparing ''Logotypes'' and ''Mark Plus Logotypes'' for Brand Development Powers 194The Criteria for Graphic Signature Effectiveness 196Evolving Influence of the Internet on Brand Naming and Graphics 198Digital Facilitation of Content 199Conclusion 199Notes 200CHAPTER 12 Trademark Searches 203The Trademark Search Process 204Trademark Search and Risk 206Use of a Professional Search Firm 207Working with the Search Firm In-House or through Outside Counsel 208Questions to Ask Before a Search Is Conducted 211Information to Keep in Mind 215Strength of Mark and Its Effect on the Search 216What a Clearance Search Can Provide 219Importance of Online Platform and Tools in Clearance 221Online Screening Uses and Options 222Comprehensive Search (United States and Canada) 224Specialized Search Services 224Global Search Options (non-United States and Canada) 225Conclusion 228Notes 229CHAPTER 13 Investigations: Considerations for Selecting and Directing Outside Investigators 231Why Hire Outside Investigators 232What to Expect from Your Investigators 237Special Considerations for Attorneys 240How to Find IP Investigators 243Other Services that Investigators Can and Should Be Able to Provide 244International Investigations 246Conclusion--The Future 248Notes 248CHAPTER 14 Model Intellectual Property Internship Programs: Internship Programs within the Scope of Employment Law 251Benefits and Drawbacks of Using Legal IP Interns 251Employment Law Issues 252Sources and Screening of Potential Interns 254Structure of the Internship Program 255Retaining and Maximizing the Benefits of Postinternship Relationships 257A Model IP Law Internship Program 258The Current Trend in Internship Programs 259Conclusion 259Notes 259CHAPTER 15 Maximizing ''Green'' Brand Exposure and Minimizing Perceptions of Greenwashing 263Green Branding 264Conclusion 278Notes 279CHAPTER 16 The Financial Reporting Impact of Intellectual Property Activity 291IP Activity 291Relevant IP Accounting Guidance 292Accounting for IP Business Activities 296Future Transition to International Financial Reporting Standards 303Conclusion 304Notes 304About the Editors 307About the Contributors 309Index 313

Product details

• Authors: Matthew D. Asbell, Lanning G. Bryer, Lanning G. Lebson Bryer, Lanning G./ Lebson Bryer, Scott J. Lebson
• Publisher: Wiley, John and Sons Ltd
• Languages: English
• Product format: Hardback
• Released: 02.12.2011
• EAN: 9781118075876
• ISBN: 978-1-118-07587-6
• No. of pages: 336
• Subject: Social sciences, law, business > Business > Business administration