setting up an intellectual property asset management council

9
Setting up an Setting up an Intellectual Property Intellectual Property Asset Management Council Asset Management Council by Michael H. Jacobs, Esq. [email protected]

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Setting up an Intellectual Property Asset Management Council. by Michael H. Jacobs, Esq. [email protected]. Why Should a Company Seek to Protect IP?. Freedom to Operate Protection of Core Technologies (Including Right to Exclude Competitors) Licensing and Royalty Benefits - PowerPoint PPT Presentation

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Page 1: Setting up an Intellectual Property Asset Management Council

Setting up an Intellectual Setting up an Intellectual Property Asset Property Asset

Management CouncilManagement Council

byMichael H. Jacobs, [email protected]

Page 2: Setting up an Intellectual Property Asset Management Council

page 2

Why Should a Why Should a Company Seek to Company Seek to

Protect IP?Protect IP?• Freedom to Operate

• Protection of Core Technologies (Including Right to Exclude Competitors)

• Licensing and Royalty Benefits

• Enhancing Reputation as a Technology Company

• Enhance “Brand”

Page 3: Setting up an Intellectual Property Asset Management Council

page 3

Why Steps Should a Why Steps Should a Company Take?Company Take?

• Physical Security

• Employee Agreements

• Contracts

• Education

• IP Procurement Program

Page 4: Setting up an Intellectual Property Asset Management Council

page 4

What Is Needed for a What Is Needed for a Procurement Program?Procurement Program?• Management and Legal

Department Support

• Infrastructure– Invention Disclosure Forms– Staffing– Incentive Program

• Intellectual Property Asset Management (IPAM) Council

Page 5: Setting up an Intellectual Property Asset Management Council

page 5

What Is an IPAM What Is an IPAM Council?Council?

• Team Tasked with Reviewing Invention Disclosures Submitted by Employees

• Authorized by Management and Legal to Approve or Reject Disclosures

• Two Major Roles– Gatekeeper (as discussed above)– Spokespeople for Program

Page 6: Setting up an Intellectual Property Asset Management Council

page 6

Who Should Be on an Who Should Be on an IPAM Council?IPAM Council?

• Representative from Legal– Preferably Registered Patent Attorney

• Representative from Various Business Units– Include Major Technology Areas– Don’t Forget Other Groups

• Level of Technical Skill– Don’t Just Include “Techies”

• Enthusiasm and Commitment

Page 7: Setting up an Intellectual Property Asset Management Council

page 7

How Should an IPAM How Should an IPAM Council Be Run?Council Be Run?

• Ground Rules– Set by Management/Legal

• Chair– Preferably from Legal

• Voting System– Approve– Reject– Send Back for More Information

Page 8: Setting up an Intellectual Property Asset Management Council

page 8

The Importance of The Importance of EnthusiasmEnthusiasm

• Technical Skills and Management Level Important

• More Importantly, Members Should Be Sold on and Willing to Sell Program

Page 9: Setting up an Intellectual Property Asset Management Council

Setting up an Intellectual Setting up an Intellectual Property Asset Property Asset

Management CouncilManagement Council

byMichael H. Jacobs, [email protected]