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Developing An Intellectual Property Management Strategy

IPR Intellectual Property Rights, Intellectual Property Management, Patent law, Copyright law, Trademark law, Case Law

Companies can reap the benefits of smart intellectual property strategies as it competes in a global market. There are many things we can't control in a business but we can control intellectual property.

Patenting and use of other IP instruments has more to do with their usefulness in corporate strategies, blocking competition and providing bargaining chips for cross-licensing.

Knowledge is now the principal economic asset and its management and protection have become the key areas of corporate strategy.

Do we have the tools and IP strategies for creating and leveraging our IP Portfolio and also assess the impact of global competition on our IP strategy?

Do employer policies and IP strategy affect incentives to discover ever new commercially valuable technologies?

Can a company use intellectual property rights and develope an IP Strategy to gain and sustain competitive advantage? How the production and exchange of technology differs from more traditional economic goods?

What options do intellectual property rights offer as against the advantages enjoyed by the competitors? How can we get an early warning of potential IP conflicts?

IP management is becoming an integral part of a company's competitive strategies. The use of IPRs and strategies in the US, EU, Japan and China and the protection of IP in specific industry groups provides the strategy perspective in a globalized world.

A managerial perspective of strategies to protect a firm's inventions and the role of patents is important. An “Yale” survey of experts from US manufacturing industries found that firms typically trust and use alternative strategies such as lead time and secrecy instead of IPRs to appropriate innovation-related benefits.

Accounting and integration of the value of IP portfolios into corporate financial strategies is gaining importance.

IP practices and strategies used information technologies and communications, including computers, software, business methods and Internet applications.

Strategies of saturation patenting designed to slow down or prevent competition from exploiting alternative technological trajectories that are certainly anti-competitive.

In addition to the conventional trade-off between the presumed stronger incentives for innovation and the disclosure of inventions, stronger patents may inspire strategic patenting for the purpose of cross-licensing and thereby facilitate the exchange and diffusion of new technologies (Hall and Ham-Ziedonis, 2001).

Strategic patenting thus may be socially beneficial in encouraging the disclosure of information to other firms and in averting costly litigation. However, the strategic accumulation of patents in patent pools creates high barriers to entry (Barton, 1998).

New semiconductor firms must spend $100–$200 million in licensing fees for basic technologies that may not be all that useful (Hall and Ham-Ziedonis, 2001).

Strategies used in different industries shows that while strong patents may facilitate the transfer of technology, they also may facilitate anticompetitive behavior (Anderson and Gallini, 1998).

One of the most recent and interesting accounts of patenting strategies comes from the Stanford Workshop on Intellectual Property and Industry Competitive Standards, 1998. The debates were based on the model of innovation that involves a set of incremental and often quite different contributions by different firms, each building upon the work of the others. By the time an idea becomes a commercial product, it has had many owners, each contributing special skills and, in the aggregate, hastening the rate of innovation (Scotchmer, 1996 and Scotchmer, 1991).

Patenting is driven by strategic reasons and not by the desire to protect one's invention against imitation. Rivette and Klein (2000) and other authors of recent popular books on Intellectual Property strategies urge managers to apply for patents and use them more aggressively.

Cohen et al. (2000) caution managers about the possible risks and costs related to relying too heavily on patenting strategies when alternative methods such as being first in the market may be less costly and more effective.

Many firms use alternative strategies such as increasing the complexity of product design to fend off imitation or being first in the market to appropriate benefits from their innovations. These strategies are judged to be more effective in appropriating benefits from innovation than a reliance on statutory IPRs.

Success has been driven by the development of intellectual property for a large number of companies. A company must invest resources in intellectual property because the industry has become Intellectual Property-intensive. Information dissemination is rapid today calling for greater protection of ideas.

People are now aware of the importance of intellectual property and trade secrets.

A company should not fear that its competitors will have access to the information and copy it.

Managing Intellectual Property is absolutely important for a company's growth and development.

For example, we can carry out extensive patent searches in other countries so we don't reinvent the wheel and waste valuable time and money developing something on which someone else has already spent a huge sum of money and also time. We don't need to copy patents that already exist. We can learn and improve on what is already there. Competitors' patents also provides invaluable marketing knowledge. The market is becoming more global and everyone is starting to compete.

Intellectual Property includes intangible assets of a company. People become fixated on the tangibles and forget to look at the larger picture. Intellectual Property is one of the strong driving forces behind the successful growth of a company.

That Intellectual Property is costly is a short-term view. A company could register a patent only in the specific countries where it will be doing business. Registering it around the world because it may be a complete waste of money. We have to be realistic about where the future of the product lies.

Books:

Developing an IP Strategy for Your Company: Leading Lawyers on Intellectual Property Portfolio Capitalization (Inside the Minds) - by Aspatore Books
Developing an IP Strategy for Your Company: Leading Lawyers on Intellectual Property Portfolio Capitalization is an authoritative, insider's perspective on the issues surrounding intellectual property law including patent and trademark protection, maintaining IP portfolios, and the future of intellectual property law, on a global scale. Featuring Department Heads, Group Chairs, and Leading Partners, all representing some of the nation's top firms, this book provides a broad, yet comprehensive overview of the practice of intellectual property law, discussing the current shape and future state of patent and trademark protection from the founding doctrines, to the pivotal case law of today. From the steps involved in policing intellectual property portfolios, to crucial tactics around avoiding common IP legal risks, these authors articulate the finer points around intellectual property now, and what will hold true into the future. The different niches represented and the breadth of perspectives presented enable readers to get inside some of the great legal minds of today as experts offer up their thoughts around the keys to success within this fascinating practice area.
About Inside the Minds:

Intellectual Property Management : A Guide for Scientists, Engineers, Financiers, and Managers
by Claas Junghans, Adam Levy, Rolf Sander (Contributor), Tobias Boeckh (Contributor), Jan Dirk Heerma (Contributor), Christoph Regierer (Contributor)
This concise introduction to European patent law and global patent perspectives combines the legal and economic perspectives to adopt a unique approach that serves both inventors -- engineers and scientists -- as well as financiers and economists.
Written by experts with first-hand knowledge this book is completely up-to-date, taking into account recent additions to European patent law, especially in the field of biotechnology and genetics. While concentrating on the EU, the world perspective is nevertheless represented, including US particularities. The result is a set of guidelines allowing readers to develop a holistic patent strategy suitable for their specific needs.
For scientists, engineers, managers and financiers in the chemical industry.
This concise introduction to patent law and strategy combines legal, scientific and economic perspectives to provide a thorough foundation in the subject. The result is a set of guiding principles that allow readers to develop a holistic patent strategy aligned with their needs, and those of both fledgling and established companies.
Written by experts with up-to-date and first-hand knowledge in the field, this book takes a global view, with particular emphasis on recent modifications to European Law and the particularities of US Law.
It is recommended as first reading for scientists, managers and financiers, as well as providing patent agents and advisors with a balanced commercial perspective.

Intellectual Property Stories
by Jane C. Ginsburg (Editor), Rochelle Cooper Dreyfuss (Editor)
Intellectual Property Stories brings famous cases and case law to life by telling the true, never-heard-before stories behind landmark Intellectual Property cases and case law. Intellectual Property Stories is organized into six chapters, each drawing on case law in patents, copyrights, trademarks, or unfair competition, to illustrate the problems intellectual property law encounters. The works, inventions, and marks at issue in these cases and case law vary widely.

Pirates of the Digital Millennium : How the Intellectual Property Wars Damage Our Personal Freedoms, Our Jobs, and the World Economy,
by John Gantz, Jack B. Rochester
WHAT S IN THIS BOOK? Here s a roadmap for the 10 chapters of the journey you re about to embark upon with us: Chapter 1, Are You a Digital Pirate ?, presents an overview of the ideas and social situations regarding the licit and illicit use of copyrighted intellectual property. We ask you to evaluate your own behavior, or that of people close to you, to determine if you, or they, are pirates of the digital millennium. Chapter 2, Is it Copyright or the Right to Copy ?, presents a history of modern copyright in what we generally regard as Western civilization, beginning with monks in the European Dark Ages and moving (somewhat regressively) through English law to American issues of fair use and the sanctity of ideas. A table of the political history of copyright concludes the chapter. Chapter 3, Us Against Them ?, explores the war over intellectual property use, providing a fair and balanced perspective of all the competing camps. It s the scorecard-the playbook-of the conflict. Chapter 4, Inside the Corporate Intellect: A Day at Microsoft , explains just what goes into software development, in terms of human intellectual capital and corporate resources. Next time you think how cheap it is to make a CD, remember this chapter and that the aluminum and plastic disc is a very small part of the cost. Chapter 5, Inside the Sausage: The Making of the Digital Millen nium Copyright Act , sets out what led to the creation and passage of this piece of legislation, which has caused one of the most pitched battles between copyists and capitalists in the history of copyright. Chapter 6, Global Fallout , explores the worldwide effects and aftereffects of digital piracy. We re not talking about kids downloading tunes here. In some cases, organized crime is a major player. We explore what it takes for a less privileged country to gain economic footing with our intellectual property. Chapter 7, Dude, Where s My MP3 ?, focuses on youth, primarily American, who regard access to the Internet as an ordained right and anything on it as fair and free game. Yes, a game: If the copyright holders find a way to protect their intellectual property, the game is to crack it. Chapter 8, Eliot Ness or Keystone Kops ?, looks at the attempts- and we do mean attempts-to stem the tide of international piracy and download thievery. While the RIAA did put the fear of God in America s downloaders for a short while, most have come to believe that detection and punishment are unlikely-and it appears they may be right. Ditto for the rest of the digital planet. Chapter 9, Angel on My Shoulder: What s in It for Me? , asks you to examine your own beliefs and ethics in making a personal determination about what s right and what s not, what the other guy does be damned. We all have to take our own ethical stand. Chapter 10, Through the Fog: The Future of Intellectual Property, sums up what we've learned in the foregoing nine chapters, and extrapolates from that some solutions to the problem. Here you can test our logic and vision, and add your own. The Afterword, following Chapter 10, describes each of our personal journeys, where we reveal our views to you. Don't peek until you ve read the book, though!

Intellectual Property in the New Millennium : Essays in Honour of William R. Cornish (Hardcover) (October 14, 2004)
by David Vaver (Editor), Lionel Bently (Editor)
'... this festschrift is thoughtfully compiled and well written, on topics of considerable variety and importance, thus extending its shelf life beyond its immediate celebratory purpose.' World Intellectual Property Organization Magazine
Intellectual property law is a subject of increasing economic importance and the focus of a great deal of legislative activity at an international and regional level. This collection brings together contributions from some of the most distinquished scholars in this exciting and controversial field, covering the full extent of intellectual property laws, that is, patents, copyright, trade marks and related rights. the contributions examine some of the most pressing practical and theoretical concerns which intellectual property lawyers face.

Open Source Licensing : Software Freedom and Intellectual Property Law (Paperback) (July 22, 2004)
by Lawrence Rosen
A complete guide to the law of open source for developers, managers, and lawyers
Now that open source software is blossoming around the world, it is crucial to understand how open source licenses work—and their solid legal foundations. Open Source Initiative general counsel Lawrence Rosen presents a plain-English guide to open source law for developers, managers, users, and lawyers. Rosen clearly explains the intellectual property laws that support open source licensing, carefully reviews today’s leading licenses, and helps you make the best choices for your project or organization. Coverage includes:
Explanation of why the SCO litigation and other attacks won’t derail open source
Dispelling the myths of open source licensing
Intellectual property law for nonlawyers: ownership and licensing of copyrights, patents, and trademarks
"Academic licenses": BSD, MIT, Apache, and beyond
The "reciprocal bargain" at the heart of the GPL
Alternative licenses: Mozilla, CPL, OSL and AFL
Benefits of open source, and the obligations and risks facing businesses that deploy open source software
Choosing the right license: considering business models, product architecture, IP ownership, license compatibility issues, relicensing, and more
Enforcing the terms and conditions of open source licenses
Shared source, eventual source, and other alternative models to open source
Protecting yourself against lawsuits
“I have studied Rosen’s book in detail and am impressed with its scope and content. I strongly recommend it to anybody interested in the current controversies surrounding open source licensing.”
- John Terpstra, Samba.org; cofounder, Samba-Team
“Linux and open source software have forever altered the computing landscape. The important conversations no longer revolve around the technology but rather the business and legal issues. Rosen’s book is must reading for anyone using or providing open source solutions.”
- Stuart F. Cohen, CEO, Open Source Development Labs
A complete guide to the law of open source for developers, managers, and lawyers
Now that open source software is blossoming around the world, it is crucial to understand how open source licenses work—and their solid legal foundations. Open Source Initiative general counsel Lawrence Rosen presents a plain-English guide to open source law for developers, managers, users, and lawyers. Rosen clearly explains the intellectual property laws that support open source licensing, carefully reviews today’s leading licenses, and helps you make the best choices for your project or organization. Coverage includes:
Explanation of why the SCO litigation and other attacks won’t derail open source
Dispelling the myths of open source licensing
Intellectual property law for nonlawyers: ownership and licensing of copyrights, patents, and trademarks
“Academic licenses”: BSD, MIT, Apache, and beyond
The “reciprocal bargain” at the heart of the GPL
Alternative licenses: Mozilla, CPL, OSL and AFL
Benefits of open source, and the obligations and risks facing businesses that deploy open source software
Choosing the right license: considering business models, product architecture, IP ownership, license compatibility issues, relicensing, and more
Enforcing the terms and conditions of open source licenses
Shared source, eventual source, and other alternative models to open source
Protecting yourself against lawsuits

Fundamentals of Intellectual Property Valuation : A Primer for Identifying and Determining Value (Paperback) American Bar Association (January 25, 2006)
by Wes Anson
This primer, written by experts in the area, answers some of the most frequently asked questions about identifying the value of the primary types of intellectual property (IP) and other intangible assets. It also looks at the primary, traditional, and not-so-traditional methods of valuing these assets and includes definitions, glossary, case law studies and situations where valuation is required.

A Primer on Intellectual Property Licensing (Paperback)
by Heather Meeker
A PRIMER ON INTELLECTUAL PROPERTY LICENSING (Second Edition) is a compact, practical guide to one of the most dynamic and popular areas of legal practice today—intellectual property licensing. Developed by an attorney (advocate) in private practice who specializes in Silicon Valley technology licensing, this guide presents the basic rules of law you need to know for a licensing practice, along with helpful examples of contractual language, practice tips, and insights on custom and practice in the industry. This textbook is appropriate for a law school or business school seminar, or for practicing attorneys who wish to expand their practice into this exciting field. Individual chapters from this text are also available for seminars and CLE presentations (in electronic format).
Heather Meeker is an attorney (advocate) in private practice at Greenberg Traurig, LLP, a leading technology law firm in Silicon Valley, and specializes in drafting and negotiating intellectual property transactions for software and other technology clients. She also serves as an adjunct professor at Hastings College of the Law, teaching a seminar in intellectual property licensing, for which this textbook was developed. Ms. Meeker has degrees from Yale College and Boalt Hall School of Law. She clerked for the United States Circuit Judge John Porfilio of the Tenth Circuit. Ms. Meeker has published numerous law review articles and practice-oriented articles in the area of law and technology, and has a special interest in open source software licensing. She serves as the co-chair of the Open Source committee of the ABA’s Science and Technology Law Section, and in 2005 was selected by the Daily Journal as one of the top 30 intellectual property lawyers in California. She also worked for many years in the entertainment and computer industries, prior to her work as an attorney (advocate).

International Intellectual Property (University Case Law Book)
by Paul Goldstein
INTERNATIONAL INTELLECTUAL PROPERTY LAW: CASE LAW AND MATERIALS organizes contemporary foreign, as well as U.S., case law and literature to equip law students with the methodology they need to engage in international intellectual property practice, in both transactional and litigation settings. Carefully selected materials also expose students to: the important new directions introduced by the TRIPs Agreement; the traditional treaty regimes; and the social, economic and cultural considerations that underpin intellectual property laws around the world. Each field of law - copyright, patent, trademark, unfair competition, trade secrets, industrial design - is introduced by a comprehensive author's note placing the field in its international and comparative law context, and extensive notes on the case law and materials fill in relevant details, including currently, and historically, important topics.
PAUL GOLDSTEIN, Lillick Professor of Law, Stanford University

Intellectual Property in the New Technological Age (Hardcover)
by Robert P. Merges, Peter S. Menell, Mark A. Lemley
The authors are luminaries of Boalt, UC Berkeley. The book is for students, and therefore concentrates on precedents. Reviewer: Jukka Kemppinen.
This book is an excellent text dealing with multiple aspects of American intellectual property law. As a Canadian law student I found its approach of using first principles to introduce readers to the basics of intellectual property law very useful. From the first principles of copywright, trademark and patent law the book proceeds to give an insightful exposition of the developments of each of these areas of law in response to recent developments in the sciences. While some attention is paid to biotechnology in the patent section of the book, most of the work focusses on the impact of developments in intellectual property law as a result of information technology. - Reviewer: Elyot Waller.

Economic Approaches to Intellectual Property Policy, Litigation, and Management (September 1, 2005)
by Gregory K. Leonard; Lauren J. Stiroh (Editor)
Over the past century, the value and importance of intellectual property has grown rapidly worldwide. While it is crucial for companies to successfully manage their intangible assets, they face difficult questions in attempting to navigate the complex business and legal environment that surrounds IP rights.
Economic Approaches to Intellectual Property Policy, Litigation, and Management discusses real-world tools and strategies at the forefront of economic thinking about many of today’s most prominent intellectual property issues. Co-edited by Dr. Gregory K. Leonard and Dr. Lauren J. Stiroh, this book is an anthology of 23 articles by economists associated with NERA, whose analyses have played a crucial role in numerous landmark legal and regulatory case law. The chapters explore topics ranging from the valuation of IP damages to intellectual property rights protection in China and the antitrust implications of standard setting and patent pools.
The book addresses such key questions as:
How should the owner of IP rights be compensated when those rights are violated?
What role should antitrust and competition policy play in intellectual property matters?
How can companies more accurately assess their R&D investments and strategies?
Should emerging economic powers implement and enforce more stringent intellectual property rights?
Economic Approaches to Intellectual Property Policy, Litigation, and Management should prove to be of interest to economists, lawyers, policy makers, executives managing IP portfolios, and law and business schools
Editor Dr. Gregory K. Leonard specializes in applied microeconomics and econometrics. He has provided expert analysis, as well as written and oral testimony, in the areas of intellectual property, antitrust, damages estimation, statistics and econometrics, and labor market discrimination. Dr. Leonard was one of the developers of the merger simulation technique that is now widely used to analyze the competitive effects of mergers. He has published in the RAND Journal of Economics, the Journal of Industrial Economics, the Journal of Public Economics, the Journal of Labor Economics, Antitrust Law Journal, and the George Mason Law Review.
Editor Dr. Lauren J. Stiroh specializes in the economics of intellectual property, commercial damages, and antitrust. Much of her work and research has focused on the intersection of intellectual property and antitrust litigation. She has conducted studies of patent value and assessed damages from patent infringement in a number of sectors. In high technology industries, in particular, she has analyzed the impact of standard setting on patent value and issues related to market power. In addition, she has conducted research and prepared expert reports on a variety of issues arising from antitrust allegations, has created and critiqued damages models in a variety of contexts, and is experienced in survey design and the econometric analysis of consumer survey data. Dr. Stiroh has presented her research before the Federal Trade Commission (FTC), the United States Department of Justice (DOJ), the Canadian Competition Bureau, and in expert testimony. She has also written articles and given speeches for the American Bar Association, Law Seminars International, the Practising Law Institute, and the 2002 FTC and DOJ joint hearings on "Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy."

Virtual Monopoly: Building an Intellectual Property Strategy for Creative Advantage - From Patents to Trademarks, From Copyrights to Design Rights (Hardcover)
by Christopher Pike
Reviewer - Jerome Spaargaren (London, UK):
Christopher Pike is not your run-of-the mill intellectual property adviser. Although qualified as a patent and trade mark attorney (advocate), his experience in dealing with business management issues comes through very directly when reading this book.
It is not always appreciated that there is a whole host of available strategies for businesses which are, knowingly and in some cases not, involved in generating intellectual property. Intellectual property generators often need commercially minded guidance appropriate to their markets and their approach to business as to how their intellectual property can be used to create value. Pike has identified and crystallised models and concepts in a way which makes the grander themes of intellectual property, often held as an impenetrable area for those outside its day-to-day practice, readily understandable. He sets out a useful vocabulary of concepts and terms, describing intellectual property as a currency used in buy-sell relations and for measuring creative advantage.
I suspect that Pike may be at the forefront of a new area of consulting which is much-needed but so-far overlooked. The book he has written will surely be a useful tool to a broad range of readers, particularly those looking for insight into modern approaches to intellectual property strategy. Whilst other books on IP may be found hidden in the law section of a bookshop, this will almost certainly be found in amongst the bestselling management books.

Intellectual Property for Paralegals : The Law of Trademarks, Copyrights, Patents, and Trade Secrets (West Legal Studies Series) (Paperback) 2 edition (July 6, 2004)
by Deborah E. Bouchoux
Trademarks, copyrights, patents and unfair competition are the four major areas of intellectual property law that are presented in full in this second edition. The methods by which each is created, procedures to register or protect each, the duration of rights, infringement, and new and international developments are addressed for each of the four fields, giving the readers the scope they need to apply this information in the practical setting. The specific tasks of paralegals involved in this area of law are presented in helpful checklists. Plus, a host of sample forms and agreements, statutes, charts, citations, case studies and much more make the material easy to digest and use in the practical setting. On-line Companion for this text includes Appendices A-E, chapter summaries, trivia, and Internet resources.

Indigenous Intellectual Property Rights: Legal Obstacles and Innovative Solutions : Legal Obstacles and Innovative Solutions (Contemporary Native American Communities) (Paperback) (September 2004)
by Mary Riley
The expert contributors from around the globe provide unique case studies to guide indigenous communities and their partners in protecting their intellectual property. Addressing the poor fit between western regimes of intellectual property rights and the requirements for safeguarding indigenous cultural resources, the authors describe positive efforts at protecting indigenous knowledge. It is an important resource for advocates for indigenous and human rights and legal scholars.

Private Power, Public Law : The Globalization of Intellectual Property Rights (Cambridge Studies in International Relations)
by Susan K. Sell, Steve Smith (Series Editor), Thomas Biersteker (Series Editor), Chris Brown (Series Editor), Phil Cerny
(Series Editor), Joseph Grieco (Series Editor), A. J. R. Groom (Series Editor), Richard Higgott (Series Editor), G. John
Ikenberry (Series Editor), Caroline Kennedy-Pipe (Series Editor), Steve Lamy (Series Editor)
Review
'... a very good book ... lucidly and engagingly written as well as being excellently researched.' The King's College Law Journal
Susan Sell's book reveals how power in international politics is increasingly exercised by private interests rather than
governments. In 1994 the World Trade Organization (WTO) adopted the Agreement in Trade-Related Aspects of Intellectual Property Rights (TRIPS), which dictated to states how they should regulate the protection of intellectual property. This book argues that TRIPS resulted from lobbying by powerful multinational corporations who wished to mould international law to protect their markets.

Copyright And Human Rights: Freedom Of Expression, Intellectual Property, Privacy (Information Law Series) (Hardcover)
by Paul L. C. Torremans (Editor)
First Sentence:
When the Canada House conference in which this collection of essays is rooted was set up and subsequently when the topics and the essential components of a book treating the issue of copyright, and other intellectual property rights, and human rights were discussed amongst the series editor, the editor of this collection and the contributors it seemed obvious to think of the issue as one involving copyright and intellectual property rights in general on the one hand and human rights on the other hand.

Essentials of Intellectual Property (Essentials Series) (Paperback)
by Alexander I. Poltorak, Paul J. Lerner
This book is the liveliest, best-written and most thorough introduction to the fundamentals of this subject. Yet it goes beyond the framework of basic IP protection to discuss emerging concepts as well as inside information immediately useful in the real world. In short, it forms the next rung in the advancement of IP management up the ladder from an art to a science.
( Samson Vermont, founder of the periodical Patent Strategy & Management; Patent Attorney)
Poltorak and Lerner deliver a remarkable new book, just in time, for the layperson who wants to study the modern intellectual property landscape. In a style that prompts, guides, and mentors the reader, the book should prove invaluable to those who need to acquire enough of an understanding of the material to keep out of trouble. Easy to read and free of jargon and difficult legal language, the book is one I will recommend to those who want a straightforward introduction to an increasingly important legal specialty.
( Alexis N. Sommers, Ph.D., Professor of Industrial Engineering University of New Haven Director, Education and Training Connecticut Association of Purchasing Managers)
As intellectual property becomes a more important aspect of the world's economy, this book is a must-read. Dr. Poltorak's and Mr. Lerners experience, knowledge and wit help both new and experienced licensing practitioners understand and appreciate the simple and complex issues in the field of intellectual property licensing.
( Arthur M. Nutter, President, TAEUS)
Essentials of Intellectual Property should be required reading for any manager interested in developing an IP strategy. Alex Poltorak and Paul Lerner have distilled their years of experience into an easy to understand text that may prove to be a “go to” book for many busy executives.
( Paul E. Paray, Managing Member, Licenz Group, LLC and former CEO AnIdea Corporation.)
This critically important new volume of work not only provides the professional with a greater knowledge of this vast subject, but also the novice with a better understanding and appreciation for the results of their creative abilities.
( Lawrence J. Udell, Executive Director California Invention Center Professor of New Ventures and Entrepreneurship)
The recent interest in Intellectual Property as a company asset comes as no surprise to inventors. For years we have known that every invention, whether physical or intellectual, starts with a unique idea. This book represents the insight and experience of the two critical elements of modern IP issues - the process of securing an IP patent and the structure for protecting it. In the global information technospace of today's business, nothing is more important than understanding and controlling access to proprietary ideas. Knowing just what steps to take will help us all, inventors and users. As a holder of patents, I feel relieved to know that there is now a map for navigating the labyrinth in this area.
( Arthur “Skip” Moen, Ph.D.)
Essentials of Intellectual Property is an essential read for anyone managing an enterprise that invests resources in innovation. This book provides, with the clarity of plain English, valuable guidance for both protecting the intellectual property created by a firms creative efforts, and deriving revenue and value from them as well. After being read, it should be kept close as a handy desk reference.
( Norman Zafman, Founding partner of Blakely, Sokoloff, Taylor & Zafman)

The Economic Structure of Intellectual Property Law
by William M. Landes, Richard A. Posner
Lawrence Lessig, Stanford Law School, author of The Future of Ideas: The Fate of the Commons in a Connected World : Intellectual property is the most important public policy issue that most policymakers don't yet get. It is America's most important export, and affects an increasingly wide range of social and economic life. In this extraordinary work, two of America's leading scholars in the law and economics movement test the pretensions of intellectual property law against the rationality of economics. Their conclusions will surprise advocates from both sides of this increasingly contentious debate. Their analysis will help move the debate beyond the simplistic ideas that now tend to dominate.
Pierre N. Leval, Judge, U.S. Court of Appeals, Second Circuit : An image from modern mythology depicts the day that Einstein, pondering a blackboard covered with sophisticated calculations, came to the life-defining discovery: Time = $$. Landes and Posner, in the role of that mythological Einstein, reveal at every turn how perceptions of economic efficiency pervade legal doctrine. This is a fascinating and resourceful book. Every page reveals fresh, provocative, and surprising insights into the forces that shape law.
William Patry, former copyright counsel to the U.S. House of Representatives, Judiciary Committee : The most important book ever written on intellectual property.
Steven Shavell, Harvard Law School, author of Foundations of Economic Analysis of Law : Given the immense and growing importance of intellectual property to modern economies, this book should be welcomed, even devoured, by readers who want to understand how the legal system affects the development, protection, use, and profitability of this peculiar form of property. The book is the first to view the whole landscape of the law of intellectual property from a functionalist (economic) perspective. Its examination of the principles and doctrines of patent law, copyright law, trade secret law, and trademark law is unique in scope, highly accessible, and altogether greatly rewarding.
This book takes a fresh look at the most dynamic area of American law today, comprising the fields of copyright, patent, trademark, trade secrecy, publicity rights, and misappropriation. Topics range from copyright in private letters to defensive patenting of business methods, from moral rights in the visual arts to the banking of trademarks, from the impact of the court of patent appeals to the management of Mickey Mouse. The history and political science of intellectual property law, the challenge of digitization, the many statutes and judge-made doctrines, and the interplay with antitrust principles are all examined. The treatment is both positive (oriented toward understanding the law as it is) and normative (oriented to the reform of the law).
Previous analyses have tended to overlook the paradox that expanding intellectual property rights can effectively reduce the amount of new intellectual property by raising the creators' input costs. Those analyses have also failed to integrate the fields of intellectual property law. They have failed as well to integrate intellectual property law with the law of physical property, overlooking the many economic and legal-doctrinal parallels.
This book demonstrates the fundamental economic rationality of intellectual property law, but is sympathetic to critics who believe that in recent decades Congress and the courts have gone too far in the creation and protection of intellectual property rights.

Essentials of Licensing Intellectual Property (Essentials (John Wiley)) (Paperback)
by Alexander I. Poltorak, Paul J. Lerner
"Poltorak and Lerner have produced a highly readable and informative introduction to intellectual property licensing, written with style, grace and occasionally tongue in parenthetical cheek. It should be required reading for those new to the field as well as for others needing a 'Licensing 101' course."
- Emmett Murtha, President & CEO, QED Intellectual Property (USA); Past President of the Licensing Executives Society and former Director of Licensing for IBM
"Professionals in manufacturing and in supply chain management have little time or motivation to grapple with legal texts. Yet, they need precise, complete, easy-to-read material that can educate them both quickly and well. Alexander Poltorak and Paul Lerner, in Essentials of Intellectual Property Licensing, understand their audience's needs, and produced a work that is actually fun to read. More to the point, it is easy to read, amazingly concise and clear for a legal text, and encourages the reader to step forth as a partner with legal counsel to tackle issues head-on."
- Alexis N. Sommers, Ph.D. Professor of Industrial En gineering at University of New Haven & President of the Connecticut Association of Purchasing Managers
Full of valuable tips, techniques, illustrative real-world examples, exhibits, and best practices, this handy and concise paperback will help you stay up to date on the newest thinking, strategies, developments, and technologies in licensing intellectual property. Order your copy today!

Intellectual Property Examples & Explanations (The Examples & Explanations Series) (Paperback)
by Stephen M. McJohn
Reviewer - Domo Kun: This book has pretty good coverage of topics: Copyrights, Patents, Trademarks, Trade Secrets. The information is pretty complete, but could be organized better. My main complaint is that there is no table of case law. This is a pretty serious ommission from a law book. No table of statutes, either. And the index is pretty sucky too - no entries for "cybersquatting", "GATT", "Licensing", "genericide" - I won't go on, but I could.

Intellectual Property: Patents, Trademarks, and Copyright (Nutshell Series) (Paperback)
by Arthur Raphael Miller, Michael H. Davis
It has been said, with respect to tort law that anyone can recognize a punch in the nose. Unlike a punch in the nose, "Patents and copyrights approach, nearer than any other class of cases belonging to forensic discussion to what may be called the metaphysics of the law, where the distinctions are, or at least may be, very subtle and refined, and, sometimes, almost evanescent." This text, by famed Harvard professor Arthur Miller, includes patents, trademarks, and copyrights. Further, it addresses torts and property; antitrust and government regulation; concepts of federalism and state and federal conflicts. The text provides the scope and highlights you need to excel in understanding this field. This will enable you to answer exam questions more quickly and accurately, and enhance your skills as an attorney (advocate).

Intellectual Property: Valuation, Exploitation, and Infringement Damages, 2006 Supplement
by Gordon V. Smith, Russell L. Parr
This book is designed to simplify the process of attaching a dollar amount to intangible assets, be it for licensing, mergers and acquisitions, loan collateral, or investment purposes. It provides practical tools for evaluating the investment aspects of licensing and joint venture decisions, and discusses the legal, tax, and accounting practices and procedures related to such arrangements; examines the business economics of strategies involving intellectual property licensing and joint ventures; and provides analytical models that can be used to determine reasonable royalty rates for licensing and for determining fair equity splits in joint venture arrangements.

Intellectual Property: Omnipresent, Distracting, Irrelevant? (Clarendon Law Lectures) (May 6, 2004)
Intellectual property rights (IPRs) are increasingly significant elements of economic policy: they are vital to developed countries in an age of global trade. This book focuses on the major dilemmas that currently enmesh the subject: the omnipresent spread of IPRs across some recent technologies, the distraction caused by rights that achieve little of their intended purpose, and the seeming irrelevance of IPRs in the face of new technologies such as the internet.

A British study estimated separately the effect of R&D and IPRs on the productivity of a firm. Firms in high technology industries register larger returns on R&D while those in low technology sectors show more significant returns on IPRs (Greenhalgh and Longland, 2002).

Pitkethly (2001) compares the British and Japanese IP strategies.

The perception that Europe is lagging behind the US in IPR systems led to the establishment of the European Technology Assessment Network (ETAN, 1999) whose Working Group produced the report “Strategic dimensions of IP rights (IPRs) in the context of science and technology policy.”

Other sources of information on IPR in Europe include, the proceedings of the conference “PATINNOVA ’ 90, Strategies for the protection of innovation” Tager and von Witzleben (1991) should be mentioned. They provide detailed accounts of IPR protection in several European countries’ industries and major as well as small and medium-sized firms.

Granstrand's comprehensive study examining IP use, management and strategies in general, and in Japan in particular, is Economics and Management of Intellectual Property (Granstrand, 1999b). In addition to the detailed account and analysis of the results of his own survey of large Japanese corporations, the author compares the Japanese situation and the strategies of large corporations in Sweden and also occasionally in the US.

Granstrand's historical overview of Japanese patenting provides an enlightening introduction to the subject. The Meiji dynasty opened Japan to the world in 1868 and introduced a patent system inspired by the US and Europe 3 years later. The Tokugawa dynasty introduced the ‘Ordinance Prohibiting Innovations’ in 1718 in order to prohibit ‘new things’.

Granstrand reminds the reader that with regard to the monopoly power conferred by patents, an important distinction to be made is that a patent provides first of all a monopoly on an input: (1) many other costly complimentary inputs may be needed before monopoly profits are gained and (2) as with many inputs, a patent may be substituted by other patented or nonprotected
solutions.

The evolution of R&D spending and patenting in industrial countries is compared up to 1991, followed by the survey data on R&D and patenting in large Japanese firms (chemical, electrical and mechanical).

After the presentation of the Japanese patent system, the remainder of the book is dedicated to a discussion of patenting practices and strategies by Japanese corporations, based on the author's survey and interviews he has conducted.

That is followed by an insightful description of Japanese technology and commercialization strategies, and a comparison of means for the commercialization of new product technologies in Japan, Sweden and US. These strategies include patents, secrecy, lead time, switching costs and superior marketing.

The author discusses strategies related to the use of IPRs in standardization, IP policies and strategies, and the advantages and disadvantages of patenting in general and specifically in Japan.

His survey shows that “the status of patent activities within the firm” as well as the “strategic role of patents,” “licenses” and “top
management's attention to patenting” all increased in Japan over 1987–1992. He stresses that unlike the European and US corporations, Japanese corporations considered patents as the most effective means of capturing profits by restricting competition.

One of the specific features in Japanese strategy was the propensity to engage in technology-related product diversification in co-evolution with product-related technology diversification, thereby benefiting from economies of scale, scope and speed (as exemplified by the case of Canon).

The chapter on patent strategies is particularly interesting and informative. The presentation of various strategies (patenting, trademark, secrecy, licensing and litigation strategies) is completed and illustrated with survey results detailed for the three industry sectors.

His discussion of the analysis of patent information as a source of technical information is complemented by a warning regarding the use of patent statistics. The Appendix presents the methodology and research tools (the description of the survey, the sample and the questionnaire) used for corporate benchmarking and a comparison of corporate patenting in Sweden and Japan which may be a valuable source of information for similar studies.

The motivation of patenting strategies in ‘discrete technologies’, is to build patent fences around a core invention patent to foreclose patenting of substitutes by rivals. Typically, in these industries patents are rarely used for cross-licensing (Cohen et al., 2000).

According to innovation surveys (Levin et al., 1987; Cohen et al., 2000) R&D managers in semiconductor firms considered patents among the least effective mechanisms for appropriating results of R&D investments. They were considered less effective than alternative strategies such as being first in the market, secrecy, short product life cycles, etc.

Hall and Ham-Ziedonis (2001) explore the reasons pushing semiconductor firms to patent aggressively. They also address the question as to what effect the stronger patent rights have on patenting by firms engaged in rapidly advancing cumulative
technologies (such as multimedia or computer and semiconductors). Firms in these fields often require access to a ‘thicket’ of IP rights in order to advance technology or to legally sell or produce their product.

The authors present a summary of interviews with industry representatives and an econometric analysis of the patenting data.
The authors start with the hypothesis that the surge in semiconductor patenting is a consequence of the pro-patenting shift in the US legal environment.

They examine the following “operational” hypotheses:

Do firms most vulnerable to “hold-up” in the new patent regime (i.e. firms with large sunk costs in complex manufacturing facilities) respond “strategically” to the institutional shift by expanding their patent portfolios with which to trade?

Did the strengthening of US patent rights facilitate vertical integration and emergence of “technology specialists”, i.e. more patent intensive design-firms, as suggested by Arora and Merges (2004)?

The findings of Hall and Ham-Ziedonis (2001) suggest that:

1. The large manufacturers have indeed invested more heavily in the “pro-patent” period and appear to be engaged in “patent portfolio races” aimed at reducing concerns about being held up by external patent owners and at negotiating access to external technologies on more favorable terms. Stronger patent rights are particularly important in attracting venture capital funds and in securing proprietary rights in niche markets. Thus the paper confirms the validity of the “strategic patenting response” by capital-intensive firms. The authors find little support for the regulatory capture hypothesis (also rejected by Kortum and Lerner (1997), i.e. the view that the surge in semiconductor patenting is driven by the scale effects alone or by aggressive post 1982 patenting by Texas Instruments, the firm with the largest patent portfolio. With regard to the alternative hypothesis that the surge in patenting is driven by the unrelated improvements in management and productivity of R&D (hypothesis accepted by Kortum and Lerner as the explanation of the overall increase in US post-1982 patenting), the authors too find evidence of managerial improvements, primarily in how semiconductor firms manage their IPRs rather than their R&D.

2. As for the emergence of technology specialist design firms, the “bargaining chip use of patents” appeared less prominent in the interviews with firms specializing in the design of semiconductor products. Unlike the manufacturers, the design firms seem to seek to secure strong “bullet proof” IPRs to technologies in their niche.

Thus patents appear to be an imperfect but quantifiable measure of technology that enabled technology-based trades to be made in external markets, both in financial markets for venture capital and with suppliers and owners of complementary technologies.

Stronger patent rights may have facilitated entry by specialized firms and contributed to vertical disintegration in the semiconductor industry (Merges, 1997; Arora and Fosfuri, 2000).

But these positive effects coincide with a trend to accumulate large patent portfolios in order to use patents as bargaining chips leading to patent portfolio races. This trend was greatly helped by the apparent lowering of standards of “non-obviousness,” “usefulness” and “novelty” after 1982. (Grindley and Teece, 1997).

On patent pools, cross-licenses and standard setting and related business strategies in general and on semiconductors in particular. Shapiro (2001).

For detailed observations on the semiconductor industry's IP management and strategies in consortia - Tilton (1973), Ham et al. (1998), Grindley and Teece (1997) and Headley (1998).

Grindley and Teece (1997) provide a detailed account of the pro-active approach to IPR management in Semiconductors and Electronics and specifically linking IPR to core business, developing patent portfolios and the licensing practices of leading firms (RCA, ATT&T, IBM, Intel, Hitachi, Hewlett-Packard, etc.). The article offers examples of how leading companies managed IP and created patent portfolios, and how these were generating royalty revenues from firms that had less to offer in exchange. The licensing strategies were shaped by public policies. This was notably the case for ATT which was until 1984 a regulated
monopoly and was obliged by the antitrust consent degree to license its IP to everyone for minimal fees. The competitive strategies and IP practices of telecommunication firms are also discussed by Kefauver (1993). Similarly, IBM was covered by the consent decree and practised licensing “to ensure” the right to manufacture and market products protected by patents belonging to other firms.

The article discusses the types of cross-licensing used and royalties paid in relation to a firm's strategies and the life-cycle of their products. The practice of cross-licensing has a double positive effect on innovation:
(1) it provides firms with a return on innovation thus helping them to fund further R&D while
(2) allowing them to concentrate their innovation and patenting activities according to their comparative advantage.

Interesting points brought forward by industry experts are integrated in the Barton's synthesis. (Barton, 1998). Even though not belonging to ITC industries, the introduction of the Advanced Photographic System is a very interesting recent example of various IP strategies in the field of consumer products.

Management of IP and strategies for IP protection.

Assessing, measuring and auditing IP portfolios

The growing interest in the management of IP has resulted in efforts to improve its measurement. IP performance is now measured in ways other than simple patent counts. The emerging measures combine quantitative and qualitative aspects and enable organizations to better evaluate and manage their patent portfolios Bratic et al. (2002).

Firms are performing IP “business” audits of their IP in order to assess the commercial value and competitive use of IP for their business. The audit classifies IP into several groups. It is the first step to creating an IP portfolio for strategic purposes. For example, Dow Chemical, which has 29,000 patents, required each business unit to classify its patents under three groups:

(1) most valuable patents related to high growth business,
(2) patents that had no present or planned use but are still of value to others and
(3) patents unlikely to be used.

The first group was left for business unit competitive purposes, the second offered for licensing and the third donated or abandoned (Nermien Al-Ali, 2003).

Valuation of IP

One of the most important steps in managing IP is to establish its value. Valuation is the process of ascribing value to technology. Valuation is particularly crucial for the commercialization of early technologies, for licensing and for mergers and acquisitions (M&A).

Probably the best sources on the valuation of IP in general are Razgaitis (2002), Smith and Parr (1998) and Lamb in Simensky et al. (1999, Chapter 5) and Damodoran (1994).

According to Razgaitis, the basis of valuation is recognition that there are two concepts involved: Technology and Right. When these change, the value changes as well. The principle valuation methods are:
1. Industry standards
2. Rules of thumb
3. Rating-Ranking.
4. Discounted cash flow.
5. Advanced methods
6. Auctions.

Razgaitis recommends using multiple methods of valuation. Multiple methods produce value or a coherent range of values that make sense from those multiple perspectives.

The valuation of early technologies presents specific challenges as evidenced by the dot.com and telecom bubble of the late 1990s. This lends a special interest to the book on valuation of early technologies published at the peak of the stock market frenzy (Razgaitis, 1999; Smith and Parr, 1998, Chapter 10).

The study of a sample of 127 semiconductor patents suggests that, for patents used as “bargaining chips,” novelty and inventive activity are the most important determinants of the value of patent rights. In a series of related papers, Reitzig, 2004a, Reitzig, 2004b and Reitzig, 2003 estimated the value of patent ‘pools’, patent ‘fences’ and patent ‘thickets’ of a sample of 612 European patents and found that the value depends on the type of patented technology (discrete or complex).

The valuation of IP is also particularly important in M&A. The role of IP in M&A is especially important in information technologies (Rivette and Klein, 2000). A comprehensive treatment of IP in M&A is presented by Bryer and Lebson on the WIPO (2003) Internet site.

The valuation of patents, when included in an industry standard, should take into account the value conferred by the patented invention and the value attributable to the standard (Patterson, 2002). Smith (1997) treats valuation of trademarks.

Intellectual property protection is also a significant factor in strategic alliances. Firms adopt more hierarchical governance modes when protection is weak (Oxley, 1999).

Patent citation data are used to measure ‘technological overlap’ between firms before and after alliance formation. Partner selection can be predicted by measures of technological overlap and, once formed, alliances appear to affect the technological portfolios of firms in ways predicted by the resource-based view (Mowery et al., 1998).

Under some circumstances, the value of corporations’ intellectual capital (protected or not) is maximized by the strategy of corporate “carve-outs.” A corporate carve-out occurs when a company itself desires to hold the intellectual assets of its business in two or more sister companies.

In contrast to a corporate spin-out (or spin-off) whose shares are distributed to existing shareholders, a carve-out establishes a new set of shareholders. The chapter by Malackowski and Harrison in Goldscheider (2002, Chapter 13), describes in detail the reasons for carve-outs, the criteria to be used in evaluating the intellectual capital for carve-outs, the selection of potential partners and how the carve-out should be structured.

The joint venture IP strategies and special problems with Strategic Alliances are described by Smith and Parr (1998, Chapters 13 and 14).

Managing of IP assets

The evidence of corporations being increasingly capable of extracting value from intellectual assets is provided by the growing importance of licensing. This increase in importance had, according to Manfroy (2002), the following consequences:

(1) Corporate vision changed and many corporations created the position of Chief Technology Officer.

(2) Emergence of the Intellectual Capital Model. A model of a company from the intellectual assets perspective that explains how the different pieces of a corporation fall together, how they interrelate and their impact on a corporation's intellectual assets and profitability.

(3) Attention is given to intellectual assets management.

(4) With the increasing importance of intellectual assets licensing professionals are demanding increased remuneration.

The various aspects of best licensing practices are presented in a collective volume edited by Goldscheider (2002), in Goldscheider (1998) and UNIDO (1996).

Although the present survey does not provide an over view of the legal aspects of IP management, I wish to draw attention to the chapter on the ‘Dos and Don’ts of licensing agreements. It is a very useful guide that should help managers and legal councils interact better in their endeavors to write precise but comprehensive legal agreements (Ramsay, 2002).

Licensing increasingly involves a combination of patents, trade secrets and copyrights in the realm of software and the Internet. Trademark protection and licensing from the US and Canadian perspectives are treated in Small and McKay's Chapter 8.

Positioning IP for share holder's value through “Patent Brands” is discussed by Berman and Woods in Berman (2001, Chapter 10). One of the companies whose value is based on several world's most valuable brands is Proctor & Gamble. Weedman in Berman (2001, Chapter 11) describes how the IP portfolio is managed and exploited by Proctor & Gamble.

Smith and Parr (1998) present a Strategic IP plan and Gap analysis, illustrated by case studies of Merck and Dupont.

The best intellectual capital management practices of a group of about 30 leading companies are the raw material from which Davis and Harrison (2001) distilled the patterns that characterize some of the activities leading-edge companies use to realize value from their intellectual capital and property.

Rivette and Klein's (2000) book is full of examples of how the high tech firms in information technology industries extract value from their knowledge assets. They propose a three-pronged patent strategy for large R&D projects (Knight, 2001).

Accounting and IP

The American Institute of Certified Public Accountants (AICPA) has been requiring all companies, private and public, to disclose certain risks and uncertainties that could affect their financial performance, effective for fiscal years ending after December 15, 1995.

The new requirement, known as Statement of Position (SOP) 94-6, “Disclosure of Certain Significant Risks and Uncertainties,” challenges senior managers of businesses to find an appropriate balance between complying with new disclosure guidelines and guarding their own competitive positions and trade secrets (Kwestel and Nusbaum, 1996). However, this measure did not prevent the financial scandals that marked the end of the 1990s.

In June 2001, the Financial Accounting Standards Board of the US introduced new Financial Accounting Standards (FAS #142) Goodwill and Other IA that required significant changes in how companies record the value of their IP. As stated by Baruch (2001) who was on the committee, “For the most successful companies patents, copyrights, brands and other IA trump physical assets, such as factories, offices and even product inventory, hands down.”

In May 2001, the Securities and Exchange Commission Chairman recommended that the SEC encourage supplemental reporting by corporations on such assets.

Kossovsky and Brandegee (Goldscheider, 2002, Chapter 12) show how firms respond to these new rules by integrating IP management strategies into corporate financial strategy.

IP as financial asset

IP assets are increasingly integrated into a corporation's financial strategy. IP is leveraged in investment banking transactions.

As IP assets are used increasingly by corporations as financial assets, their value is also assessed by rating agencies.

The patenting strategy in ‘discrete technologies’ is to build patent fences around a core invention patent to foreclose patenting by rivals. In these industries, patented inventions are easily licensed but rarely cross-licensed.

In contrast, cross-licensing is characteristic of complex technologies (e.g. semiconductors, information and telecommunication technologies). In these industries, patents are not considered to provide effective protection against imitation. They are increasingly used as part of a business strategy based on an accumulation of large patent portfolios used as bargaining chips in cross-licensing to protect innovative firms against infringement suits and generate royalty revenues.

The effective use of IPRs requires that they be well incorporated into a firm's overall strategy. This is more often the case with large than with small firms. Small firms often lack or cannot afford to build up specific competencies. They also lack the financial capability to defend the infringed IPRs. The cost of obtaining a patent and the prospect of even larger litigation costs often discourages small firms from patenting, especially abroad. Thus, although small firms are often at the origin of the most revolutionary innovations, in many countries like Japan, Europe and Canada, they use IPRs less frequently than the large ones.

Rajrathnam V P, Attorney and IPR Consultant

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