Development and Managementof an
IP Portfolio
.Ross A. Epstein
TechLaw LLPLunch and Learn
UCI Innovation CenterSeptember 23, 2016
Why Me?
Ross Epstein, Managing Partner, TechLaw LLP, a unique IP and Business Boutique
Five Years in Business Litigation in San Diego
Nine Years as Telecom Entrepreneur in Eastern Europe
Provide Advice and Counsel on All Aspects of IP and Transactional Matters
Agenda
What is IP?
Developing an IP Portfolio
Managing an IP Portfolio
CONVERTINFORMATION
TOADVANTAGE
What is an Intellectual Property Right?
PatentsTrademarksCopyrightsTrade Secrets
What is a Patent?
The right to exclude, not to use
For 20 years
An Intangible Asset
A tool for defining markets
What is Patentable?
Compositions of MatterDevicesProcesses (especially
manufacturing)Improvements
Examples
New Molecule for Clearing AirNew Abdominal Exercise
MachineNew Way of Manufacturing
MicrochipsBetter Way Of Regulating
Resistance on Ab Machine
Trademarks
Protects use of a mark on goods or services in commerce
Difference Between ® and TM or SM
Any word, symbol, color, sound, packaging
Scope of rights defined by breadth of description
Examples
Word MarkWord Plus DesignLogo onlySound
Copyrights
Any work of authorship fixed in tangible form
Life plus 70 years for people – Current Rule- Different rules apply to publications before 1977
Music, art, film, sculpture, architecture, hull designs, software, books, dance
ExamplesPhoto of a SunsetComputer codeLyrics for a SongMelody for the SongCombination of Lyrics and Song
Trade Secrets
Any information, which gives a business advantage, for which reasonable measures have been taken to keep it secret, and is not generally known
Private remedy in State Court only
Can last indefinitely
ExamplesCompilationsFormulasDevicesPatternsIdeasProcesses
Developing an IP Portfolio
Developing an IP Culture
IP awareness – EducationProcesses and ProceduresIncentive ProgramsBest Practices in LabsSecrecy/Confidentiality
Trade Secret Protection
Internal controls needed to prove up trade secret status
Treat as secretEmployee handbook and
agreements Common law right so no filing
opportunity
Patent Protection Procedures
Determine an invention worth protecting
Prior art searchingProvisional vs. Non-Provisional
Application
Copyright Protection Procedures
Mark your copyrighted materials*File a copyright applicationWithout a Registration, cannot
enforce in the US
*Development and Management of an IP Portfolio © 2016
Ross Epstein
Trademark Protection Procedures
Name business, product or serviceDetermine if eligible for
trademark protectionMark your marks – TM or ®File a trademark application – Use
or Intent to Use
Managing an IP Portfolio
Technical Considerations
International RightsCost of Maintaining/Prosecuting
both US and ForeignDirection of Technology (Patents)Branding strategies (Trademarks)
IP Business StrategiesCompetitive AdvantageCross-licensingEntry & Development of Export MarketsLicensing RoyaltiesTax AdvantagesForeign ManufactureBasis for Enterprise ValuationM&A Opportunities
Summary
Developing an IP Portfolio Requires an Understanding of What IP Assets are and How They Benefit the Business
Managing an IP Portfolio Is How a Business Generates Value From its IP Portfolio
Thank You
www.techlawllp.com
TechLaw LLP6265 Greenwich Drive, Suite 201San Diego, CA 92122
Tel. (888) 989-8529 ext. 88Fax (858) 430-3482