The business landscape is littered with intellectual property landmines.
Microsoft, Apple Computer, Sun Microsystems, Medtronic, Research in Motion and Nintendo are just a few of the companies that have settled patent infringement disputes for hundreds of millions of dollars.
Toshiba paid a $425 million judgment to Lexar for violating trade secrets. Pfizer’s patents for Viagra were ruled invalid in China and Microsoft faces similar concerns over its Office product in South Korea. In the battle of protecting intellectual property, the IP lawyer is on the front lines
It is the IP lawyer who:
-Drafts the patent applications, knowing that the defensibility of the firm’s intellectual capital hangs on each word that the IP lawyer crafts.
-Must have the prescience to secure valuable IP rights throughout the world in anticipation of his company later doing business in remote markets.
-Must defend his company against attacks by patent trolls.
-Must have the business savvy to transform fierce litigation into mutually beneficial licensing agreements.
-Must retain patent, trademark, and copyright exclusivity while avoiding anti-trust challenges.
This report includes interviews with many of the nation’s foremost authorities on the intellectual property law. Intellectual Property Litigation is extremely expensive and becoming increasingly common. From 1984 to 1999, the mean loss absorbed by companies faced with IP litigation was $28.7 million in total losses. Microsoft, Apple Computer, Sun Microsystems, Medtronic, Research in Motion and Nintendo are just a few of the companies that have settled patent infringement disputes for hundreds of millions of dollars. Cisco Systems reports that it is named as a defendant in at least one IP lawsuit each week.
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Title Index:
Preface
I. The Role of IP in Mergers & Acquisitions: Gary Abelev, Partner, Dorsey & Whitney LLP
II. Licensing Imperatives for Life Sciences Companies: Hollie Baker, Partner, WilmerHale
III. Protecting Your Brand By Protecting Your Trademarks: Elliott C. Bankendorf, Principal, Welsh & Katz Ltd.
IV. How Entrepreneurial Companies Can Best Package Their IP In Anticipation Of An Acquisition: Robert Barrett, Member, Bell, Boyd and Lloyd LLC
IV. The Strategic Protection of Trade Secrets is Smart Business: Stephen E Baskin, Partner, Kirkpatrick Stockton LLP
V. Intellectual Property Securitization: Ronald S. Borod, Brown Rudnick Berlack Israels LLP Don Davis, CommercialStrategy, LLC
VI. Business Methods Patents: Brian J. Colandreo, Senior Counsel, Holland & Knight LLP
VII. The Intersection of Intellectual Property and Employment Law: Adam Forman, Partner, Littler Mendelson, PC
VIII. Intellectual Property Management – When to sell, license and retain
Intellectual Property: Steve Frank, Partner, Goodwin Procter LLC
IX. Patent Assertion: Alan Grimaldi, Partner, Howrey LLP
X. Willful Infringement of Patents in Licensing Negotiations: David Killough, Partner, Vinson & Elkins
XI. The Impact of Patent Quality: The Honorable Bruce Lehman, Senior Counsel, Akin Gump Strauss Hauer & Feld & Former Commissioner of the Office of Patent and Trademarks and contributing interviewer, Bruce Berman, President of Brody Berman Associates, Inc.
XII. Blocking Strategies for Intellectual Property: Ira Levy, Partner, Goodwin & Procter LLP
XIII. Trade Secrets Litigation: William Parrish, Shareholder, Jenkins &
Gilchrist
XIV. Financing IP Litigation: Ronald J. Schutz, Attorney, Robins, Kaplan, Miller & Ciresi LLP
XV. When Should Young Companies Pursue Patents? When Should They Maintain Trade Secrets?: Diana M. Steel, Counsel, Sullivan & Worcester LLP
XVI. Insights into Trademark and Copyright Infringement and False Advertising: Perry Viscounty, Partner, Latham & Watkins
XVII. Defending the Worldwide Patent System is Akin to Hercules Battling Hydra: David Wanetick, Managing Director, IncreMental Advantage
XVIII. The Importance of Intellectual Property Due Diligence in Context of Mergers & Acquisitions: David Wanetick, Managing Director, IncreMental Advantage
XIX. Defending Your Intellectual Property Through Defensive Publication: David Wanetick,
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