Essentials of Intellectual Property

The definitive primer on intellectual property for business professionals, non-IP attorneys, entrepreneurs, and inventors

Full of valuable tips, techniques, illustrative real-world examples, exhibits, and best practices, the Second Edition of this handy and concise paperback will help you stay up to date on the newest thinking, strategies, developments, and case law in intellectual property.

• Presents fundamentals of patents, trademarks, copyrights, trade secrets and other less-know forms of IP, such as registered design and mask works
• Covers important concepts such as IP strategy, protection, audits, valuation, management, and competitive intelligence
• Offers an introduction to IP licensing and enforcement
• Now features discussion of critical precedent-setting recent IP cases and proposed patent reform

Providing business professionals and IP owners with in-depth knowledge of this extremely important subject, this book helps those new to this field gain a better understanding and appreciation for the results of their creative abilities.

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

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.

Intellectual Property

"This excellent book provides important analytical tools and innovative perspectives for those who recognize that dealing with patents and copyrights is not just for lawyers anymore, but has become an essential management task."
—Eli Noam, Professor of Finance and Economics, and Director of the Columbia Institute for Tele-Information, Columbia Business School

The world of intellectual property changes faster than you can say "precedent-setting lawsuit"—and it's crucial to keep up with those changes, even if you're not a patent attorney. Essentials of Intellectual Property, Second Edition is a concise, lively, and often witty introduction to the world of patents, trademarks, copyrights, and trade secrets for non-lawyers.

In these pages, you'll find a clear discussion of concepts such as:

• IP strategy, valuation, audits, and management—how to know what your IP is worth and manage it accordingly
• Patent triage—knowing when to "let go" of unprofitable patents, or monetize under used patents
• Patent enforcement—strategies to use and fatal errors to avoid
• Licensing and cross-licensing—crafting a deal that works for all parties
• Contract work, non-competition agreements, and works-for-hire—making sure you own the IP you paid employees or contractors to create

This Second Edition also includes a summary of the latest precedent-setting IP lawsuits and how the legal landscape has changed over the past decade, as well as a list of some of the most important (and sometimes, controversial) reforms that Congress has proposed to the U.S. patent system.

Thorough, understandable, and business-savvy, Essentials of Intellectual Property, Second Edition will quickly bring you up to date on everything you need to know about patents and other forms of intellectual property.