Intellectual Property Law

Patent Auction – An Alternative to Licensing Or Commercializing a Patented Invention

Posted on October 21, 2011

Profitably monetizing a patent is usually harder than getting the patent in the first place. Having succeeded in obtaining patent protection of an innovative method or device, a patent owner generally has four basic choices for achieving a return on invested resources: practicing the patented invention in-house, that is, by directly setting up production, marketing and sales of products; licensing the invention to one or more outside enterprises in return for fees and/or royalties; selling the patent directly to a third party; or, selling the patent through an auction.

Non-auction strategies of patent monetization are inherently risky. For example, in-house utilization incurs up-front costs in engineering, production, marketing and product distribution, with no guaranteed return of investment. Licensing of a patent or patent portfolio requires comprehensive industry knowledge and the ability to police (monitor and enforce) an agreement. Negotiating a good direct-sale price of a patent or portfolio requires thorough knowledge of industry players and state of the art. Valuation is usually difficult.

In direct one-on-one licensing or sales negotiations, the buyer tries his best to drive prices downwards. In contrast, the natural dynamic of an auction is that prospective buyers who are business competitors bid the selling price upwards. Arguably, the best measure of a patent's value to a potential buyer is simply the price he would pay to prevent a competitor from getting it. Thus, a gathering of competitors at an auction can provide a more accurate, higher valuation of a patent's worth than one-on-one negotiations.

Safeguarding Your Documents

Posted on October 12, 2011

The basic concept of estate planning is to be prepared - prepared for disability, for retirement... even for leaving your loved ones behind.

So, it only makes sense that part of creating an estate plan is gathering up your important documents and storing them in a safe place. Of course, your Will and your life insurance policy aren't the only documents that need protecting, just as disability and death aren't the only events you need to guard against.

The truth is disaster can strike at any time. Maybe it's a full-blown catastrophe such as a fire or flood or perhaps it's a more focused loss such as your computer's hard drive crashing.

The point is, the more prepared you are, the less you have to worry about finding the documents that you need.

So, what should you be protecting?

Well, for starters, your birth certificate, your Social Security card, your marriage license and divorce decrees.

Any documents regarding your children, such as birth records, adoption records, custody papers, medical records, shot records and the like.

Also remember to safeguard copies of all your estate planning documents (of course) along with life insurance policies, mortgage deeds, pension and retirement plan documents, tax returns, stock certificates, bonds and bank account numbers.

But wait... we're not done yet!

You should also collect and protect other not-so-obvious things like your address book, your pet's vaccination records, copies of any business contracts you've entered into and receipts and warranties that you need to keep.

Think about what you would miss if there were a fire and you had to act quickly. You wouldn't have time to grab much and certainly, you'd miss your furniture, but couches and televisions can be replaced.

What can't you replace? Your family photos? Your computer files? Login information, PINs and access codes for your accounts? What about the love letters that your spouse wrote to you years and years ago?

The beauty of technology is that you can preserve all these things. Scan them into your computer and then burn copies on CDs. You can send those copies to other family members for safe-keeping or store them in your safe deposit box at a bank.
Off-site storage services allow you to create a complete and on-going backup of your entire hard drive for a small monthly service fee and an external hard drive allows you to grab your drive and go when there's not much time.

Your estate planning attorney should have copies of all your pertinent documents of course, but it never hurts to keep separate copies for yourself and your loved ones. Keeping these copies safely tucked away ensures that you'll always have what you need, no matter what the future might hold.

Key Features of Trademark Management Software

Posted on October 5, 2011

The trademark department within an enterprise plays an important role in securing and enforcing trademark rights including registered trademarks, service marks and trademarks in use. Some trademark departments also track registered domain names as well as copyrights.

Trademark management software must empower trademark department to better service their client's needs, secure the appropriate rights, notify them about important dates and help them implement the enforcement program effectively.

While trademark docketing alone may work well for your law firms; corporate legal departments should look at trademark management software to help them achieve complete lifecycle management.

Here are the top 5 features required for a robust trademark management software:

Comprehensive Functionality

A good trademark management software must have comprehensive features and functionality for trademark search request submission and review process, trademark docketing, trademark electronic case file repository, renewals, trademark licensing, trademark enforcement and policing, anti-counterfeiting, domain and copyright management.

Trademark docketing must include robust docketing features for all major jurisdictions including regular updates to local and international laws pertaining to trademark registration. The system should track all important docketing dates (statutory as well as soft reminders) and send reminder emails to pre-defined team members. Further, for process optimization, the system must provide checklists at various stages like filing, response to actions, and notice of allowance.

Collaboration and Workflow

Business users should be able to submit an online trademark request form for initiating trademark requests including the ability to upload various documents. The reviewers must be able to route the request to various teams for searching and/or approval. The details about the search performed including search results should be stored for future use.

For departments who are using outside counsels, the system should provide a workflow to engage an outside counsel for a trademark prosecution case. The outside counsels must be able to view and work on assigned tasks and upload drafts, responses and costs online. Each action should send automatic docketing notifications to the designated individuals within the department.

Reports and Analytics

The trademark management system must provide searches, reports and analytical tools to analyze portfolio as well as costs. Besides the standard ("canned") reports, the system must provide intuitive interface to customize existing reports without vendor assistance, provide ad hoc searching and reporting as well as ability to export search/report data to excel, PDF etc.

Configuration (and not customization)

The system must allow configuration of the online trademark request form, docketing as well as approval workflows by application administrators. As you select the best trademark management software for your needs, be sure you understand the difference between the configuration and customization and can clearly differentiate where certain functionality falls.