Intellectual Property Operations and Implementation in the 21st Century Corporation

LANNING G. BRYER is a Partner in the New York office of Ladas & Parry LLP and is Director of the firm's Mergers, Acquisitions, and Licensing Group. He is coauthor of Intellectual Property Assets in Mergers and Acquisitions, published by Wiley. SCOTT J. LEBSON is a Partner in the Mergers, Acquisitions, and Licensing Group of Ladas & Parry LLP, focusing primarily on counseling clients with respect to the acquisition, sale, licensing, and securitization of intellectual property rights and related technology. MATTHEW D. ASBELL is an Associate in the New York office of Ladas & Parry LLP, primarily practicing in the area of domestic and international trademark law.

Preface xiii Acknowledgments xix CHAPTER 1 Conflicts: Causes, Prevention, and Controlling Counterfeiting 1 In-House Enforcement Strategies on the Internet 2 Partnering with Outside Legal Counsel 6 Conclusion 11 Notes 12 CHAPTER 2 Electronic Discovery in Intellectual Property Cases 15 Electronic Discovery Process 16 Conclusion 31 Notes 31 CHAPTER 3 Controlling Patenting Costs 37 Defining the Objective 37 Deciding Where to File 39 Delaying Costs 42 Alternative Means of Protection 42 Proper Preparation 45 Logistics of Filing 47 PCT Formality Advantages 49 Avoiding Duplication of Effort 50 Prosecution Issues 51 Particular Issues in the United States 52 Particular Issues in the EPO 53 Particular Issues in Japan 54 Pruning the Portfolio 54 Licenses of Right 54 Conclusion 56 Notes 56 CHAPTER 4 Trademark Costs: Trimming the Sails in Rough Economic Waters 61 Evaluating and Organizing a Trademark Portfolio 63 Selecting and Clearing a New Trademark 66 Filing and Pursuing Trademark Registrations 71 Using and Enforcing Trademark Rights 79 Conclusion 80 Notes 80 CHAPTER 5 Domain Names 85 An Overview of the Internet 85 Domain Names 86 Conclusion 98 Notes 99 CHAPTER 6 Creating, Perfecting, and Enforcing Security Interests in Intellectual Property 103 U.S. Securitization of Intellectual Property 104 Perfection of Security Interests in Trademarks in the United States 107 Perfection of Security Interests in Patents in the United States 109 Perfection of Security Interests in U.S. Copyrights 110 Perfection of Security Interests in Domain Names 112 Attempts to Harmonize Perfection Laws in the United States as It Relates to Intellectual Property 112 Default 113 International Creation and Perfection of Security Interests 114 Conclusion 116 Notes 117 CHAPTER 7 Strategic and Legal View of Licensing Patents 121 Nomenclature 122 State of the Law 124 Basic Principles for Licensing 125 How Does One Go About Licensing Out Patents, and What Are Some Strategic Considerations? 127 Some Legal Considerations for a Patent Licensor 132 Strategic and Legal Considerations for a Patent Licensee 133 Royalty Audits 133 Conclusion 134 Notes 136 CHAPTER 8 Monetizing IP Rights: Licensing In and Out 139 Grant of Rights 140 Key Defined Terms 141 Quality Control 143 Term and Termination 144 Confidentiality 146 Managing Costs: Insurance, Indemnifications, Reps, and Warranties 147 Conclusion 148 Notes 148 CHAPTER 9 Working with Government 151 The Big Picture 152 Commercial or Noncommercial 154 Commercial Item 154 Changes to COTS Using Government Funding 154 Noncommercial Item 155 Noncommercial Item Development 156 Noncommercial Item Development Funding 157 Noncommercial Item License Rights to the Government 157 Noncommercial Item Doctrine of Segregability 158 Noncommercial Item Assertions Table 159 Marking 160 Deferred Ordering 160 Beware the Prototype 161 Inventions and Patents in Noncommercial Contract Effort 161 Noncommercial Item Effort Impact 162 Private Funding and Government Funding 163 Reuse Prohibitions 163 Treatment of Subcontractors 164 Outsourcing of Government Work 164 IP Owner s Rights Relative to Government Activity 165 Conclusion 165 Notes 165 CHAPTER 10 Valuation, Monetization, and Disposition in Bankruptcy 169 IP and the Bankruptcy Context 169 Quality, Hierarchy, and Value 171 The Valuation Process 172 Value Extraction: Monetization and Disposition 176 Lessons: Due Diligence and Marketing 178 IP Monetization in the 21st Century 179 Conclusion 180 Notes 180 CHAPTER 11 Outsourcing of Branding and Marketing 183 Brand Naming Project Dynamics 184 Brand Naming Compared to Reference Naming 185 The Descriptive Brand Name Problem 186 The Unique Brand Name Value 187 A Memorable Brand Name? 187 Common Misguided Brand Name Criteria 188 Six Criteria for Effective Brand Names 189 The Supporting Role of a Descriptive Phrase 191 The Graphic Realization of a Brand Name 192 The Value of Graphic Realizations 193 Comparing Logotypes and Mark Plus Logotypes for Brand Development Powers 194 The Criteria for Graphic Signature Effectiveness 196 Evolving Influence of the Internet on Brand Naming and Graphics 198 Digital Facilitation of Content 199 Conclusion 199 Notes 200 CHAPTER 12 Trademark Searches 203 The Trademark Search Process 204 Trademark Search and Risk 206 Use of a Professional Search Firm 207 Working with the Search Firm In-House or through Outside Counsel 208 Questions to Ask Before a Search Is Conducted 211 Information to Keep in Mind 215 Strength of Mark and Its Effect on the Search 216 What a Clearance Search Can Provide 219 Importance of Online Platform and Tools in Clearance 221 Online Screening Uses and Options 222 Comprehensive Search (United States and Canada) 224 Specialized Search Services 224 Global Search Options (non United States and Canada) 225 Conclusion 228 Notes 229 CHAPTER 13 Investigations: Considerations for Selecting and Directing Outside Investigators 231 Why Hire Outside Investigators 232 What to Expect from Your Investigators 237 Special Considerations for Attorneys 240 How to Find IP Investigators 243 Other Services that Investigators Can and Should Be Able to Provide 244 International Investigations 246 Conclusion The Future 248 Notes 248 CHAPTER 14 Model Intellectual Property Internship Programs: Internship Programs within the Scope of Employment Law 251 Benefits and Drawbacks of Using Legal IP Interns 251 Employment Law Issues 252 Sources and Screening of Potential Interns 254 Structure of the Internship Program 255 Retaining and Maximizing the Benefits of Postinternship Relationships 257 A Model IP Law Internship Program 258 The Current Trend in Internship Programs 259 Conclusion 259 Notes 259 CHAPTER 15 Maximizing Green Brand Exposure and Minimizing Perceptions of Greenwashing 263 Green Branding 264 Conclusion 278 Notes 279 CHAPTER 16 The Financial Reporting Impact of Intellectual Property Activity 291 IP Activity 291 Relevant IP Accounting Guidance 292 Accounting for IP Business Activities 296 Future Transition to International Financial Reporting Standards 303 Conclusion 304 Notes 304 About the Editors 307 About the Contributors 309 Index 313