Essentials of Intellectual Property E-Book

Alexander I. Poltorak

• Herausgeber: John Wiley & Sons
• Kategorie: Fachliteratur
• Sprache: Englisch

Seitenzahl: 401

Veröffentlichungsjahr: 2011

Beschreibung

The definitive primer on intellectual property for business professionals, non-IP attorneys, entrepreneurs, and inventors Full of valuable tips, techniques, illustrative real-world examples, exhibits, and best practices, the Second Edition of this handy and concise paperback will help you stay up to date on the newest thinking, strategies, developments, and case law in intellectual property. * Presents fundamentals of patents, trademarks, copyrights, trade secrets and other less-know forms of IP, such as registered design and mask works * Covers important concepts such as IP strategy, protection, audits, valuation, management, and competitive intelligence * Offers an introduction to IP licensing and enforcement * Now features discussion of critical precedent-setting recent IP cases and proposed patent reform Providing business professionals and IP owners with in-depth knowledge of this extremely important subject, this book helps those new to this field gain a better understanding and appreciation for the results of their creative abilities.

Leseprobe

Contents

Cover

Essentials Series

Title Page

Copyright

Foreword to the Second Edition

Foreword to the First Edition

Preface

Author's Note

Acknowledgments

About the Authors

Introduction: Setting the Stage

Intellectual Capital, Intellectual Assets, and Intellectual Property

Chapter 1: The Big Three: Patents, Trademarks, and Copyrights

Patents

Trademarks

Copyrights

Summary

Chapter 2: The Supporting Players: Other Types of IP—Trade Secrets and Know-How, Mask Works, and Noncompetition and Nondisclosure Agreements

Trade Secrets and Know-How

Mask Works

Noncompetition Agreements and Confidential Disclosure Agreements

Summary

Chapter 3: Protecting the Fruits of Your Research and Development

Getting It Down on Paper

The Invention Disclosure Form

Make Sure You Own It

Plan Ahead for Protection

Summary

Chapter 4: Know What You Have (IP Audit) and What the Other Guy Has (Competitive Intelligence)

The Intellectual Property Audit

The Patent Review Committee

Portfolio Audit—Triage for Patents

Competitive Intelligence

Patent Mapping

Summary

Chapter 5: What Is It Worth? Putting a Value on Intellectual Property

Valuation Models

Replacement Cost

Patent Value: A Model for a Perfect World

Patent Value: A Model for the Real World

Summary

Chapter 6: Make More Money by Sharing (Licensing)

Introduction

To Sell or Not to Sell—That Is the Question

Perchance to License

It Ain't Over Till It's Over

Nothing Ventured, Nothing Gained

Risk and Price—Package Deals in IP Licensing

The Carrot and the Stick

Summary

Chapter 7: Corporate Officers and Directors Beware: You Can Be Liable for Mismanaging Intellectual Property

Nature of Injuries Arising from Mismanagement of Intellectual Property

Standard of Responsibility for Portfolio Management

Delegation of Responsibility

Liability for Failure to Meet Duty of Care

What to Do

Damned If You Don't, Damned If You Do

Summary

Chapter 8: Enforcing Your Rights

Patent Infringement

Risks of Patent Litigation

Declaratory Judgment Action: The Preemptive Strike

Damages

Patent Infringement Litigation—An Overview

Litigation Risk Analysis

Dealing with Complexity and Moving into the Modern Age

Choosing and Managing Your Counsel

Strategies and Tactics of Enforcement

Patent Reexamination: To Reexamine or Not to Reexamine, That Is the Question

Trial versus Settlement

Alternative Dispute Resolution: Blessed Are the Peacemakers

Summary

Chapter 9: The Fundamental Things Apply, As Time Goes By: Intellectual Property in Cyberspace

Business Method Patents and E-Commerce

Tradition, Tradition!

Problems, Problems, Problems

Trademarks and Domain Names

Copyright and the Internet

Summary

Chapter 10: The Patent Portfolio and Its Effect on Stock Price

Patent Count

Citation Impact

Science Linkage

Summary

Chapter 11: How the Courts Have Changed the Patent Law

Bilski: Nine Months’ Gestation But No Birth

KSR: How Obvious Is Common Sense?

Muniauction: Step by Step—It's All About Control

MedImmune and SanDisk: Making Lawsuits More Likely

In Re Seagate Technology, LLC: Holding Willfulness to a Higher Standard

eBay: From No Question, to Four Questions, to Only One Question

Egyptian Goddess: Taking Design Patents a Step Back in Time

Aristocrat: Justifying the Means

Forest Group: False Marking, True Opportunity?

Summary

Chapter 12: Patent Reform

Litigation Venue

Damages

False Marking

Willful Infringement

First-to-File

Post-Grant Review

Best Mode Requirement

Summary

Appendixes

Appendix A: Trademark and Service Mark Application

Appendix B: Copyright Application

Appendix C: Confidentiality and Nondisclosure Agreement

Appendix D: Invention Assignment Form

Assignment of Invention

Appendix E: Basic IP Audit Questionnaire

Appendix F: Patent Valuation

Portfolio Valuation

Individual Patent Valuation

In the Real World

Appendix G: Invention Disclosure Form

Appendix H: License Agreements

1. Definitions

2 License

3 Payments

3 Payments

4 Indemnification

5 Termination

6 Representations and Warranties of Licensor

7 Representations and Warranties of Licensee

8 Relationship of The Parties

9 Assignment

10 Dispute Resolution

11 Limitations of Rights and Authority

12 Miscellaneous

Bibliography

Further Reading

Index

Essentials Series

The Essentials Series was created for busy business advisory and corporate professionals. The books in this series were designed so that these busy professionals can quickly acquire knowledge and skills in core business areas.

Each book provides need-to-have fundamentals for those professionals who must:

Get up to speed quickly, because they have been promoted to a new position or have broadened their responsibility scopeManage a new functional areaBrush up on new developments in their area of responsibilityAdd more value to their company or clients

Books in this series include:

Essentials of Accounts Payable by Mary S. Schaeffer

Essentials of Balanced Scorecard by Mohan Nair

Essentials of Business Ethics by Denis Collins

Essentials of Business Process Outsourcing by Thomas N. Duening and Rick L. Click

Essentials of Capacity Management by Reginald Tomas Yu-Lee

Essentials of Cash Flow by H.A. Schaeffer, Jr.

Essentials of Corporate and Capital Formation by David H. Fater

Essentials of Corporate Fraud by Tracy L. Coenen

Essentials of Corporate Governance by Sanjay Anand

Essentials of Corporate Performance Measurement by George T. Friedlob, Lydia L.F. Schleifer, and Franklin J. Plewa, Jr.

Essentials of Cost Management by Joe and Catherine Stenzel

Essentials of Credit, Collections, and Accounts Receivable by Mary S. Schaeffer

Essentials of CRM: A Guide to Customer Relationship Management by Bryan Bergeron

Essentials of Enterprise Compliance by Susan D. Conway and Mara E. Conway

Essentials of Financial Analysis by George T. Friedlob and Lydia L.F. Schleifer

Essentials of Financial Risk Management by Karen A. Horcher

Essentials of Foreign Exchange Trading by James Chen

Essentials of Intellectual Property, Second Edition by Alexander I. Poltorak and Paul J. Lerner

Essentials of Knowledge Management by Bryan Bergeron

Essentials of Licensing Intellectual Property by Paul J. Lerner and Alexander I. Poltorak

Essentials of Managing Corporate Cash by Michele Allman-Ward and James Sagner

Essentials of Managing Treasury by Karen A. Horcher

Essentials of Online Payment Security and Fraud Prevention by David Montague

Essentials of Patents by Andy Gibbs and Bob DeMatteis

Essentials of Payroll Management and Accounting by Steven M. Bragg

Essentials of Risk Management in Finance by Anthony Tarantino with Deborah Cernauskas

Essentials of Sarbanes-Oxley by Sanjay Anand

Essentials of Shared Services by Bryan Bergeron

Essentials of Supply Chain Management by Michael Hugos

Essentials of Technical Analysis for Financial Markets by James Chen

Essentials of Trademarks and Unfair Competition by Dana Shilling

Essentials of Venture Capital by Alexander Haislip

Essentials of Working Capital Management by James Sagner

Essentials of XBRL by Bryan Bergeron

For more information on any of the above titles, please visit www.wiley.com.

Copyright © 2011 by Alexander I. Poltorak, Paul J. Lerner. All rights reserved.

Published by John Wiley & Sons, Inc., Hoboken, New Jersey.

Published simultaneously in Canada.

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Limit of Liability/Disclaimer ofWarranty: While the publisher and author have used their best efforts in preparing this book, they make no representations or warranties with respect to the accuracy or completeness of the contents of this book and specifically disclaim any implied warranties of merchantability or fitness for a particular purpose. No warranty may be created or extended by sales representatives or written sales materials. The advice and strategies contained herein may not be suitable for your situation. You should consult with a professional where appropriate. Neither the publisher nor author shall be liable for any loss of profit or any other commercial damages, including but not limited to special, incidental, consequential, or other damages. For general information on our other products and services or for technical support, please contact our Customer Care Department within the United States at [phone], outside the United States at [phone] or fax [phone].

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Library of Congress Cataloging-in-Publication Data

Poltorak, Alexander (Alexander I.)

Essentials of intellectual property / Alexander I. Poltorak, Paul J. Lerner.—2nd ed.

p. cm.—(Essentials series)

Includes bibliographical references and index.

ISBN 978-0-470-88850-6 (pbk.)

1. Intellectual property—United States. I. Lerner, Paul (Paul J.) II. Title.

KF2980.P65 2011

346.7304′08—dc22

2010039904

Essentials Series

The Essentials Series was created for busy business advisory and corporate professionals. The books in this series were designed so that these busy professionals can quickly acquire knowledge and skills in core business areas.

Each book provides need-to-have fundamentals for those professionals who must:

Get up to speed quickly, because they have been promoted to a new position or have broadened their responsibility scopeManage a new functional areaBrush up on new developments in their area of responsibilityAdd more value to their company or clients

Books in this series include:

Essentials of Accounts Payable by Mary S. Schaeffer

Essentials of Balanced Scorecard by Mohan Nair

Essentials of Business Ethics by Denis Collins

Essentials of Business Process Outsourcing by Thomas N. Duening and Rick L. Click

Essentials of Capacity Management by Reginald Tomas Yu-Lee

Essentials of Cash Flow by H.A. Schaeffer, Jr.

Essentials of Corporate and Capital Formation by David H. Fater

Essentials of Corporate Fraud by Tracy L. Coenen

Essentials of Corporate Governance by Sanjay Anand

Essentials of Corporate Performance Measurement by George T. Friedlob, Lydia L.F. Schleifer, and Franklin J. Plewa, Jr.

Essentials of Cost Management by Joe and Catherine Stenzel

Essentials of Credit, Collections, and Accounts Receivable by Mary S. Schaeffer

Essentials of CRM: A Guide to Customer Relationship Management by Bryan Bergeron

Essentials of Enterprise Compliance by Susan D. Conway and Mara E. Conway

Essentials of Financial Analysis by George T. Friedlob and Lydia L.F. Schleifer

Essentials of Financial Risk Management by Karen A. Horcher

Essentials of Foreign Exchange Trading by James Chen

Essentials of Intellectual Property, Second Edition by Alexander I. Poltorak and Paul J. Lerner

Essentials of Knowledge Management by Bryan Bergeron

Essentials of Licensing Intellectual Property by Paul J. Lerner and Alexander I. Poltorak

Essentials of Managing Corporate Cash by Michele Allman-Ward and James Sagner

Essentials of Managing Treasury by Karen A. Horcher

Essentials of Online Payment Security and Fraud Prevention by David Montague

Essentials of Patents by Andy Gibbs and Bob DeMatteis

Essentials of Payroll Management and Accounting by Steven M. Bragg

Essentials of Risk Management in Finance by Anthony Tarantino with Deborah Cernauskas

Essentials of Sarbanes-Oxley by Sanjay Anand

Essentials of Shared Services by Bryan Bergeron

Essentials of Supply Chain Management by Michael Hugos

Essentials of Technical Analysis for Financial Markets by James Chen

Essentials of Trademarks and Unfair Competition by Dana Shilling

Essentials of Venture Capital by Alexander Haislip

Essentials of Working Capital Management by James Sagner

Essentials of XBRL by Bryan Bergeron

For more information on any of the above titles, please visit www.wiley.com.

Foreword to the Second Edition

The three most important developments in world history, according to Abraham Lincoln, were the perfection of printing, the discovery of America, and the introduction of patent laws.

Printing allowed the widespread communication of ideas across time and space. The discovery of America unveiled a vast continent of resources and had produced a unique form of government where, for the first time in world history, people governed themselves. “The patent system,” Lincoln said, “added the fuel of interest to the fire of genius.”

Lincoln's appreciation of patent laws reflected that of George Washington and the other founding fathers of the United States. The framers of the Constitution, of which Washington was the most prominent, put into that document a simple 32-word provision that has been the foundation of U.S. progress for more than two centuries:

The Congress shall have power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.

This is the only place in the body of the Constitution where the word right exists. The rights to engage in free speech, own a gun, petition the government, and not incriminate yourself, among others, were enacted later as constitutional amendments.

In Washington's first State of the Union message (January 1790), he asked the first Congress to enact patent and copyright laws.

On April 10, 1790, the sixth law enacted in the United States was the Patent Act. The eighth law, enacted on May 31, 1790, was the Copyright Act. With that, the first Congress established a national development policy based on stimulating innovation, creativity, investment, and the sharing of knowledge that patents and copyrights facilitate.

The genius of Article I, Section 8, is that in authorizing Congress to write the laws on intellectual property (IP) rights, it also encouraged it to change those laws to accommodate the needs of a growing nation. As anticipated, Congress has altered those laws, often wisely but sometimes not.

The intellectual property rights of the American people represent a golden covenant between society and creative individuals that encourages the sharing of their knowledge in exchange for a publicly granted right of exclusive use for a set time. This covenant is the foundation of the American economy.

Despite the fundamental importance of these intellectual property rights, most Americans—including corporate leaders, academics, businesspeople, members of Congress, and even most inventors—have only a vague awareness of what those rights are and how they are applied.

Alexander I. Poltorak and Paul J. Lerner published, in 2002, a book that set out to clarify what they termed the Essentials of Intellectual Property. Almost immediately, their book became the standard for anyone wishing to understand what intellectual property is and how best to protect and advance one's IP rights.

Poltorak was a prodigy physicist who earned his doctorate at age 22. He emigrated to the United States from the former USSR in 1982, became an inventor, and formed General Patent Corporation (GPC), which helps inventors and companies protect their intellectual property.

Lerner is an aeronautical engineer who holds an MBA and a law degree. Prior to becoming the senior vice president and general counsel of GPC, he led the IP departments at Olin Corporation, Black & Decker Corporation, and other major national companies.

This update of their original book also includes new chapters on how the courts are changing the patent law via reinterpretation of rules and practices long thought settled, and it gives an up-to-the-minute analysis of the patent reform legislation that, fortunately for inventors and most companies, Congress has refused to enact during the 109th, 110th, and 111th sessions.

This revised edition of Essentials of Intellectual Property is a well-written, jargon-free compendium of information about IP, coupled with shrewd advice, which I recommend highly to all interested in invention, innovation, intellectual property rights, and national development.

Pat Choate Washington, Virginia September 3, 2010

Foreword to the First Edition

As I write this, the U.S. Patent and Trademark Office (USPTO) has just released its annual report of the top 10 private-sector organizations receiving patents in the prior year. A comparison of the listing for 2001 to those of past years reveals that the number of patents required to rank first (as IBM has done since 1993) has more than tripled in the past decade; the total number of U.S. patents issued annually has gone up nearly 65 percent; and the proportion garnered by the top 10—all well-known electronics companies—has increased from 7.5 percent to nearly 10 percent of all patents issued in 2001.

Fascinating statistics, but what's behind them? Simply put, it's money. Dollars, yen, euros—billions of them, collected in the form of royalties every year by companies and individuals (the late Jerome Lemelson, for example) with valuable intellectual property, principally patents. IBM alone will have received nearly $2 billion during 2001 in IP-related payments, most of it cash, and nearly all of it pure profit. Canon, Hitachi, Lucent, and many other top patent holders enjoy significant returns on their R&D investments. And then there are the software companies—Oracle, Microsoft, and, yes, IBM again—whose products are intellectual property, protected globally by copyrights and earning billions in sales.

No wonder companies of all sizes throughout the world (8 of the USPTO's top 10 are non-U.S. companies) are paying close attention to acquiring and leveraging patents, copyrights, trademarks, and other intellectual property. What was once the province of the patent department, all too often a corporate backwater, now has the full attention of most CFOs and many CEOs. As IP is seldom taught outside of law schools, and then only to those focused on this niche of jurisprudence, where can the business executive turn for a clear, concise, and useful briefing on this new phenomenon? Most legal tomes cover in dreary prose, and at great length, every aspect of IP law but none of the exciting potential of their subject matter. Essentials of Intellectual Property, by Alexander Poltorak and Paul Lerner, admirably fills this vacuum.

The authors—who are the principals of General Patent Corporation (GPC), an imaginative and successful intellectual property management and licensing firm—not only know the subject matter, they explore the nuances and expose the pitfalls in a thorough and refreshingly readable fashion. They resort to plain English to guide us to a clear understanding of this “currency of the New Economy” by systematically explaining the essential legal elements and business value of each type of IP, with useful suggestions on how to acquire, protect, and deploy these fruits of creativity.

It is well realized that most IP, particularly that held by corporations, is undervalued and unappreciated. As IP is usually not reflected on the balance sheet (there is currently a groundswell of proposals to change this), it is widely ignored by those charged with providing a return on investment, as represented by assets. Nevertheless, the returns are extremely generous once these valuable assets are recognized and tapped for their potential. The authors provide comprehensive and useful insight and guidance for an effective process of protection, recognition, valuation, and exploitation of what a recent book on the subject referred to as “Rembrandts in the attic.”1

A chapter addressing the prospect of liability to corporate executives and directors for mismanaging intellectual property makes sobering reading and, if nothing else will, should be a wake-up call to many who have approved large sums to acquire IP without having a clue of what to do with it and why. If this were not sufficient, Chapter 10, “The Patent Portfolio and Its Effect on Stock Price,” should arouse the most somnolent of corporate custodians.

Poltorak and Lerner have provided a clear and useful road map for the non-lawyer business executive, without stinting on necessary detail—and, surprisingly for the genre, they have done so with much grace and good humor. Moreover, the appendixes include very usable sample forms that address everything from applying for a patent to a model license agreement.

I can think of no more sincere tribute to Alex and Paul than to say, “This is the book I wish I had written.”

Emmett J. Murtha Stamford, CT January 25, 2002

Notes

1. Kevin G. Rivette and David Kline, Rembrandts in the Attic (Boston: Harvard Business School Press, 2000).

Preface: Intellectual Property: The Currency of the New Economy

Intellectual property, also known simply as IP, has become one of the most talked about topics in business today, yet it is still one of the least understood. Simply stated, intellectual property consists of products of the human mind and creativity that are protected by law. It is an intangible, lacking physical substance. It has neither length nor width nor height. It has no weight and casts no shadow. It is colorless, odorless, and tasteless.