Essentials of Intellectual Property

ALEXANDER I. POLTORAK is the founder, Chairman, and CEO of General Patent Corporation (GPC), an intellectual property (IP) firm focusing on intellectual property strategy and valuation, IP licensing, and enforcement. PAUL J. LERNER is the Senior Vice President and General Counsel of General Patent Corporation (GPC). He coauthored Essentials of Licensing Intellectual Property, as well as articles in Intellectual Property Worldwide, Patent Strategy & Management, and Managing Intellectual Property.

Foreword to the Second Edition vii

Foreword to the First Edition xi

Preface xv

Author’s Note xix

Acknowledgments xxi

About the Authors xxiii

Introduction: Setting the Stage xxv

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

2 The Supporting Players: Other Types of IP—Trade Secrets and Know-How, Mask Works, and Noncompetition and Nondisclosure Agreements 34

3 Protecting the Fruits of Your Research and Development 47

4 Know What You Have (IP Audit) and What the Other Guy Has (Competitive Intelligence) 54

5 What is It Worth? Putting a Value on Intellectual Property 70

6 Make More Money by Sharing (Licensing) 83

7 Corporate Officers and Directors Beware: You Can Be Liable for Mismanaging Intellectual Property 92

8 Enforcing Your Rights 104

9 The Fundamental Things Apply, As Time Goes By: Intellectual Property in Cyberspace 167

10 The Patent Portfolio and Its Effect on Stock Price 180

11 How the Courts Have Changed the Patent Law 185

12 Patent Reform 209

Appendixes

Appendix A: Trademark and Service Mark Application 223

Appendix B: Copyright Application 231

Appendix C: Confidentiality and Nondisclosure Agreement 239

Appendix D: Invention Assignment Form 242

Appendix E: Basic IP Audit Questionnaire 247

Appendix F: Patent Valuation 249

Appendix G: Invention Disclosure Form 270

Appendix H: License Agreements 272

Bibliography 286

Further Reading 287

Index 289