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Intellectual Property in Business Transactions: Protecting the Competitive Advantage

Glen P. Belvis

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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

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  • 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"

CHAPTER 1
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

CHAPTER 2
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

CHAPTER 3
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

CHAPTER 4
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

CHAPTER 5
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

CHAPTER 6
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

CHAPTER 7
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

CHAPTER 8
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

CHAPTER 9
Sarbanes-Oxley

§ 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

CHAPTER 10
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

CHAPTER 11
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

CHAPTER 12
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

CHAPTER 13
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

Index