Intellectual Property in Business Transactions: Protecting the Competitive Advantage

Glen P. Belvis

Add To Cart


Intellectual property rights are a powerful economic weapon, enabling companies to generate revenues and limit competition — but not with out risk. When does enforcing intellectual property rights against competitors violate antitrust laws? Should you risk the public disclosure involved in filing a patent application?

Intellectual Property In Business Transactions: Protecting the Competitive Advantage is a start-to-finish guide that helps dealmakers, in-house counsel and information officers harness the full power of intellectual property rights while also protecting them. Its scope includes patent, copyrights, trademarks and trade secrets law; tax, anti-trust and securities law; IP group management; attorney client privilege; conflicts of interest; and more.

Topics include: six ways to gain economic advantage from an intellectual property portfolio; choosing a form of intellectual property protection most likely to lead to damages and injunctive relief; antitrust problems; working with national and international standards-setting bodies; taxation of transfers of intangibles; intellectual property holding companies; IP policies that foster, rather than stifle, creativity; and more. In addition to expert analysis, this unique book includes forms and sample language to help practitioners protect vital information in a wide variety of situations.

Book #00702; looseleaf, one volume, 520 pages; published in 2010, to be updated as needed; no additional charge for updates during your subscription. Looseleaf print subscribers receive supplements. The online edition is updated automatically. ISBN: 978-1-58852-164-4

This title is available in digital format. Downloadable eBook included in your purchase. We recommend Apple® iPad® or iPhone®, SONY® Reader, or Adobe® Digital Editions (for PC or Mac users).

Your purchase price includes the cost of all previous updates and any updates that may be issued within three months of your order. 

I understand I am enrolling in an automatic supplement program. Please notify Law Journal Press to cancel this program. We reserve the right to change prices without notice. 

Annual subscriptions to Law Journal Press books are valid for one year and include any updates published during that period. Subscriptions are auto-renewed to avoid disruptions in service. Print editions must be returned within 30 days in resalable condition for refund. For downloadable eBook products, a refund will be granted if the eBook has not been downloaded. A single user online subscription is either an individual user name/password for one customer which can be accessed by up to two machines at one time by that one customer; or, a single use concurrent license in a group account environment. This may be set up as an IP authenticated or login/password account. To transition to a group account, click here. Or, call toll-free, 877-807-8076, to order or inquire about discounted site licenses.

  • Availability: Available
  • Brand: Law Journal Press
  • Product Type: Books
  • Edition: 0
  • Page Count: 520
  • ISBN: 978-1-58852-164-4
  • Pub#/SKU#: 702
  • Volume(s): 1

Author Image
  • Glen P. Belvis
Has over twenty-five years of experience in all facets of intellectual property law, including patents, trademarks, copyrights, trade secrets and related antitrust matters. He was a shareholder of Brinks Hofer Gilson & Lione for the last twenty years and is Chief IP Counsel of Foro Energy Inc., a venture capital, DOE-funded development drilling company.

Also by Glen P. Belvis:
Best Practices: Ethical Considerations in IP Transactions
Best Practices: IP Strategies to Maximize the Value of the Company -- "Show me the Money"

Strategic Overview - Integrating Intellectual Property and Business Strategies to Maximize Economic Power

§ 1.01 Introduction: Matching Intellectual Property and Business Strategies
[1] Vertical Focus on Intellectual Property Strategies
[2] Diversity in Intellectual Property Strategies
[3] Intellectual Property Culture
§ 1.02 An Economic Definition of Intellectual Property
§ 1.03 Utilization of Intellectual Property’s Economic Power
[1] Reduced Competition
[2] Design Around Burden
[3] Licensing Revenue
[4] Defensive Patents
[5] Damage Awards
[6] Injunction
§ 1.04 Protecting the Company’s Business as Well as the Innovation
§ 1.05 Infringement Perspective and Overview
[1] No Single-Infringer
§ 1.06 Diversity in Patent Claims
[1] Compound and Product Claims
[2] Article of Manufacture and Device Claims
[3] Process, Method and Use Claims
[4] Product-by-Process Claims
[5] Section 112 Means- and Step-Plus-Function Claims
[6] Plant and Design Claims
§ 1.07 Strategies Under the America Invents Act (AIA)
[1] General
[2] Early Filing of Detailed and Lengthy Disclosures
[3] Internet Postings as a Cost Deferring Strategy and Prior Art Shield
[4] Choice of Law Through Parallel CIP Applications

Patent Law

§ 2.01  Patents and Their Relationship to Business Transactions and Other Intellectual Property
§ 2.02 Sources of Patent Law
§ 2.03 Patents as a Property Right
[1] Licensing Patents
§ 2.04 Patentability
[1] Patentable Subject Matter
[2] Section 112 Requirements
[3] Novelty
[4] Utility
[5] Nonobviousness
§ 2.05 Infringement
[1] In General
[2] Burden of Proof
[3] Literal Infringement and Infringement Under the Doctrine of Equivalents
[4] Types of Infringement: Direct, Contributory and Inducement
§ 2.06 Defenses
[1] In General
[2] Burden of Proof and the Presumption of Validity
[3] Inequitable Conduct
[4] Patent Misuse
[5] Strategies Under the AIA
§ 2.07 Remedies
§ 2.08 Patents and Other Forms of Intellectual Property
[1] Relationship to Trade Secrets
[2] Relationship to Copyrights
[3] Relationship to Trademarks
§ 2.09 America Invents ActOverview, Comparison, Relationship to IP Strategies
[1] In General
[2] Integration of the AIA and Comparison to the Existing Patent Laws

Copyright Law

§ 3.01 Introduction—Copyrights and Their Relationship to Business Transactions and other Intellectual Property
§ 3.02 Sources of Copyright Law
[1] The Copyright Act of 1909
[2] The Copyright Act of 1976 and Amendments
§ 3.03 Rights Created by Copyright Law
[1] Domestic Copyright Law
[2] International Copyright Law
§ 3.04 Mechanics of Copyrights
[1] Requirements for Acquiring a Copyright
[2] Copyrightable Material and Subject Matter
[3] Process to Obtain Copyright Protection
[4] Territorial Scope of Protection
[5] Duration of Copyrights
[6] Ownership of Copyrights
§ 3.05 Copyrights - Relationship to Other Intellectual Property
[1] Relationship Between Patent Law and Copyright Law
[2] Relationship Between Trademark Law and Copyright Law
[3] Relationship Between Trade Secret Law and Copyright Law
§ 3.06 Enforcement and Protection of Copyright
[1] Infringement
[2] Fair Use Exception to Copyrights
[3] Remedies

Trademark Law

§ 4.01 Trademarks and Their Relationship to Business Transactions and Other Intellectual Property
§ 4.02 Sources of Trademark Law
[1] State Law
[2] Federal Law Under the Lanham Act
[3] Trademark Dilution Revision Act (TDRA)
[4] Anticybersquatting Consumer Protection Act (ACPA)
[5] International Treaties
§ 4.03 Trademarks as a Property Right
§ 4.04 Trademarks: Relationship to Other Intellectual Property
[1] In General
[2] Lanham Act, State and Common Law Protection
[3] Federal Preemption
[4] Relationship to Patents
[5] Relationship to Copyright
[6] Relationship to Trade Secret Law
§ 4.05 Trademark Rights
[1] Types of Marks
[2] Distinctiveness
[3] Functionality
[4] Use
§ 4.06 Enforcement and Protection of Trademark Rights
[1] Registration Process
[2] Time Limits of Protection
[3] Incontestability
[4] Registration Exclusions
[5] Trademark Cancellation Under § 2d
[6] Effect of Non-Registration
§ 4.07 Trademark Transactions
[1] Assignments and Licensing Agreements
[2] Antitrust Limitations
§ 4.08 Trademark Liability
[1] Liability Based on Confusion
[2] Permissible Uses
[3] False Advertising
[4] Remedies
§ 4.09 Public Resources
[1] Web Site Remedies
[2] Domain Name Resources

Trade Secret Law

§ 5.01 Trade Secrets and Their Relationship to Business Transactions and Other Intellectual Property
§ 5.02 Sources of Trade Secret Law
[1] State Substantive Law
[2] Restatement (First) of Torts § 757, comment b
[3] Uniform Trade Secrets Act (UTSA)
[4] Restatement (Third) of Unfair Competition
§ 5.03 Trade Secrets as a Property Right
§ 5.04 Trade Secrets — Relationship to Other Intellectual Property
[1] In General
[2] No Preemption by the Patent and Copyright Laws
[3] Choice Between and Coexistence with Patent Protection
[4] Relationship Between Trademarks and Trade Secrets
[5] Relationship Between Copyright and Trade Secrets
§ 5.05 Reasonable Secrecy Measures
§ 5.06 Enforcement and Protection of Trade Secret Rights
§ 5.07 Offer of Employment, Confidentiality Paragraph
§ 5.08 Offer of Employment, Respect for Trade Secrets of Others Paragraph
§ 5.09 Employee/Consultant Confidentiality Agreement
§ 5.10 Employee Handbook Confidentiality Provision
§ 5.11 Employee Exit Interview Form
§ 5.12 Visitor Sign-in Form, Confidentiality Introduction
§ 5.13 Simple Confidentiality Agreement
§ 5.14 Detailed Generic Mutual Nondisclosure Agreement
§ 5.15 Detailed Confidentiality and Non-Circumvention Agreement

Intellectual Property Antitrust Law

§ 6.01 Business and Pragmatic Considerations
§ 6.02 Patent Law from an Antitrust Prospective
[1] Policy Considerations and Conflicts
[2] The Patent Monopoly Defined
[3] Patent Infringement
[4] Transferability of a Patent’s Exclusionary Rights
§ 6.03 Copyright Law from an Antitrust Perspective
[1] Policy Considerations and Conflicts
[2] The Copyright Monopoly Defined
[3] Copyright Infringement
[4] Transferability of a Copyright’s Prohibitory Rights
§ 6.04 Trademark and Trade Secret Law from an Antitrust Perspective
§ 6.05 Antitrust Laws
[1] Overview
[2] Sherman Act Section 1
[3] Sherman Act Section 2
[4] The Clayton Act
[5] The Federal Trade Commission Act
[6] Types of Conduct Subject to Antitrust Scrutiny
§ 6.06 Unfair Competition Law
§ 6.07 The Interaction of Patent and Antitrust Law
[1] General Principles and Considerations
[2] Patent Licensing and the Sale of Patented Goods
§ 6.08 Enforcement of Patent Rights
[1] In General
[2] No Requirement to License a Patent
[3] Enforcement of a Patent Known To Be Invalid or Non-Infringed and Noerr-Pennington Immunity
[4] Walker Process Fraud on the Patent Office
[5] Unfair Competition Actions
§ 6.09 Copyright Antitrust
§ 6.10 The Interaction of Trademark and Trade Secret Law with Antitrust Law

Standards Setting and Intellectual Property Activities

§ 7.01 Introduction
[1] Standards Setting in General
[2] Drafting to Commercial Value
[3] The Confluence of Standards Setting and Patent Activities
§ 7.02 Review of Case Law and Regulatory Activity in the Standards Setting Intellectual Property Area
[1] Potter v. Storage Technologies
[2] Stambler v. Diebold
[3] Lucas v. Unison
[4] Wang v. Mitsubishi
[5] Townshend v. Rockwell
[6] Rambus v. Infineon
[7] Federal Trade Commission
[8] Foreign Law
§ 7.03 Pragmatic Approaches to Address the Business and Legal Uncertainty in the Standards Setting Area
[1] Summary of Current Law
[2] Examples of Patent Policies and Their Ambiguities
[3] Suggested Language for Patent Disclosures
[4] Standards Setting Coordinator
[5] Not for Profit
[6] Evidence of Willful Infringement
§ 7.04 Copyright and Standards Setting Activities

Taxation of Intellectual Property Transactions

§ 8.01  Introduction
§ 8.02 Differing Consequences Between Individuals and Corporations
§ 8.03 Sales and Licenses
[1] Transfer of All Substantial Rights
§ 8.04 Acquisition of Intellectual Property
[1] Acquisition Through the Sale of Intellectual Property
[2] Acquisition Through the Licensing of Intellectual Property
§ 8.05 Disposition of Intellectual Property
[1] Disposition Through the Sale of Intellectual Property
[2] Disposition Through the Licensing of Intellectual Property
§ 8.06 Intellectual Property Holding Companies
[1] Basic Concept
[2] Establishing a License-Back Royalty Rate
[3] IRS Response
[4] Intellectual Property Holding Companies in the State Tax Context
§ 8.07 Conclusion


§ 9.01 Sarbanes-Oxley and its Relationship to Intellectual Property Business Transactions
§ 9.02 The Sarbanes-Oxley Act
[1] Compliance Obligations and Standards
[2] Lawyer Responsibilities
[3] Disclosure Requirements

Setting Up and Maintaining an Intellectual Property Group

§ 10.01 Introduction: Philosophy and Implementation of Intellectual Property Strategies
§ 10.02 Harvesting Intellectual Property
[1] Company-Wide Targeted Intellectual Property Seminars
[2] Pizza, Beer and Patents
[3] Patenting the Competition
[4] Invention Submission Forms
[5] Intellectual Property Intranets
[6] Reporting Liability Issues
[7] Evaluating the Intellectual Property, Prioritizing and Budgeting
[8] Technical Sales and Support Forces as a Source for Intellectual Property
[9] The Unique Situation of Technical Sales and Support Forces: Risks and Benefits
§ 10.03 Invention Submission Long Form
§ 10.04 Intellectual Property Ownership Agreements
[1] Intellectual Property Ownership Agreements—Detailed for Employees and Consultants
§ 10.05 Non-Competition Agreement
§ 10.06 Pre-Litigation and Litigation Forms
[1] Document Hold Notice Form
[2] Expert Engagement Letter (Non-Testifying Expert Witness Engagement Letter; Before and During Litigation)
[3] Former Employees as Witnesses, Counsel Agreement
§ 10.07 Consideration Under the AIA
[1] Time is Of the Essence
[2] Joint Research Agreements
[3] In-House Patent Facilitators
[4] Invention Record Keeping Requirements Continue

Ethical Issues and Obligations in Intellectual Property Matters

§ 11.01 Introduction—The Rules and Codes Establishing Ethical Obligations in Intellectual Property Matters
[1] The Model Code
[2] The Model Rules & State Rules
[3] The PTO Ethics Code
§ 11.02 Establishing, Maintaining, and Ending the Attorney-Client Relationship
[1] Overview and Framing of the Issues
[2] Who is the Client?
[3] Initial Contact with Potential Clients
[4] Conflict of Interest Clearance
[5] Formalizing the Relationship
[6] Ending the Attorney-Client Relationship
[7] Managing the Attorney-Client Relationship Under the AIA
§ 11.03 The Duty to Protect and Keep Client Confidences
§ 11.04 Witnesses
[1] Practitioner as a Witness
[2] Contacting Fact Witnesses
§11.05 Key Ethics Rules and Codes for the Intellectual Property Practitioner
[1] ABA Model Rules
[2] New York Rules
[3] Illinois Rules
[4] Texas Rules
[5] California Rules
[6] PTO Rules
§11.06 Sample Letters, Check Lists and Outlines Regarding Ethical Issues
[1] Potential Client Initial Contact Outline
[2] Client Intake Form
[3] Sample Engagement Letter
[4] Sample Declination Letter
§11.07 Pretexting
[1] Obtain Products for Evaluation
[2] Social Networks

The Attorney-Client and Work Product Immunity Privileges

§ 12.01 Introduction—Business and Pragmatic Considerations
§ 12.02 Attorney-Client Privilege in General
[1] Elements and Policies of the Attorney-Client Privilege
[2] Confidentiality Requirement
[3] Facts and Business Advice are Not Protected
[4] Application of the Attorney-Client Privilege to Corporations
§ 12.03 Work Product Immunity in General
§ 12.04 Waiver
§ 12.05 Controlling Law and Standards
§ 12.06 Patent Prosecution
[1] Introduction and History
[2] Patent Agents
[3] Foreign Patent Prosecution
[4] Work Product Protection for Patent Prosecution Activities
§ 12.07 Typical IP Group Communications
[1] Invention Submission Forms
[2] Draft Patent Applications
[3] Inventor Signoff Forms
[4] Internal Patent Department Checklists
[5] Attorney Notes
[6] Invention Review Committees
[7] Draft Agreements
[8] Invalidity and Non-Infringement Opinions
§ 12.08 The Commonality of Interest Doctrine
[1] Requirements for, and the Applicability of, the Commonality of Interest Doctrine
[2] Creating Commonality of Interest Agreements and Understandings
[3] Keeping the Attorney-Client Relationships Properly Aligned
[4] Situations Where the Commonality of Interest Doctrine is Required
§ 12.09 Obtaining and Relying on the Advice of Counsel
[1] Steps to Avoid Infringement and Manage Risks
[2] Steps to Minimize the Risks of Willful Infringement
[3] Knorr-Bremse v. Dana
[4] Scope of Waiver, if the Advice of Counsel is Relied Upon
§ 12.10 Crime Fraud Exception
§ 12.11 Simple Commonality of Interest Confirmatory Document
§ 12.12 Multi-Party Commonality of Interest Agreements
[1] Version A
[2] Version B
[3] Prohibition Against Exchanging Information Relating to Price
§ 12.13 Manufacturer/Buyer Commonality of Interest Agreement
§ 12.14 Indemnitor/Indemnitee Commonality of Interest Agreement
§ 12.15 Licensor/Licensee Commonality of Interest Agreement

Federal Funded Programs

§ 13.01 Introduction: Landscape, Risks and Benefits of Federal Funding
§ 13.02 Funding Processes
[1] Proposals for Funding/Initial Submissions
[2] Government Funding Agreements
[3] Correlating Key Risk Areas with IP and Business Strategies
§ 13.03 Protecting and Securing Intellectual Property Rights in Federally Funded Programs
[1] Protecting Existing Intellectual Property
[2] Technology Developed Under a Federally Funded Program
[3] Confidential Protection for Technology Developed Under a Federal Program
[4] Subject Inventions
[5] Internal Disclosure of Inventions
[6] Disclosure of Subject Inventions to the Government
[7] Election to Retain Title in Subject Inventions
[8] Filing Patent Application Covering Subject Inventions
[9] Forfeiture of Patent Rights in Subject Inventions
§ 13.04 Requirement for Employment Agreements
§ 13.05 Sub-Contractors and Sub-Recipients
§ 13.06 Non-Exclusive License to the Government/Rights for Uni-versity Employees
[1] Non-Exclusive Federal License
[2] University Employee Rights
§ 13.07 March-In Rights
§ 13.08 Made in America and Other Restrictions
§ 13.09 Government Authorization to Use Others Patents
§ 13.10 Coordinated Strategy for Patent Filing and Program Reporting
§ 13.11 No Private Cause of Action
§ 13.12 Considerations Under the AIA