Posts in Business

USPTO Ramps Up Efforts to Promote Women Entrepreneurs

The United States Patent and Trademark Office (USPTO) on Wednesday launched the Women’s Entrepreneurship (WE) initiative to “inspire women and tap their potential to meaningfully increase equity, job creation, and economic prosperity.” The initiative is a collaborative effort with the United States Department of Commerce. “Unleashing the potential of women entrepreneurs is good for business, good for families and good for our economy,” said U.S. Secretary of Commerce Gina Raimondo.

Making the Most of Relationships with International Associates

For many intellectual property lawyers, the search for a local associate to assist with IP filings around the world begins and ends with a quick email to colleagues asking who knows someone in a particular country. And while personal connections are important, this method probably won’t lead to the best legal services for your clients. As we emerge from the pandemic and return to face-to-face meetings, here are several tips for vetting foreign associates. This process ideally starts overseas and leads to in-person conversations, but text chats and video calls still have value.

Sign the Prenup: What Brands Can Learn From the Kanye West/Adidas IP Breakup

Trust and estate attorneys regularly advise their clients to enter into prenuptial agreements to protect the valuable assets each spouse brings to the marriage as well as how to distribute community property in the event of a divorce. Brand collaborations with celebrities, influencers or other brands are much like marriages, but brand collaborations are even more unlikely to last. Why not plan for the split, whether it be a conscious uncoupling or a Page 6 kind of divorce, with a prenup? The high profile split between Adidas and Ye (fka Kanye West) reminds us that collaboration agreements should not only plan for the best of times, but it is worth setting up the agreement to account for a sudden and troubling end.   

Lessons from the Levandowski Case: Reimagining the Exit Interview as Risk Management

It was February 2017 when Waymo, Google’s self-driving car unit, sued Uber in what would become the biggest trade secret case of the century. Waymo alleged that its former manager, Anthony Levandowski, had organized a competing company while still at Waymo, and before leaving had downloaded 14,000 confidential documents. As it turned out, Uber had known about this when it agreed to pay $680 million for Levandowski’s brand new startup; and we’ve already looked at how the hubris of that hasty transaction provides lessons for hiring in new markets driven by emerging technology.

What’s in a Pose? When it Comes to Brand Protection, Quite a Lot

Usain Bolt filed a recent U.S. trademark application depicting his widely recognized victory pose. The trademark has been applied for in relation to items such as clothing, jewellery, shoes and restaurant and bar services. As Bolt has retired from athletics, he is clearly hoping to add more strings to his bow.

Striking a Balance between Quality and Value in a Patent Portfolio

Without unlimited funds, a constant issue for developing and maintaining a patent portfolio is how to balance between obtaining the highest quality patents and obtaining patents at a lower cost to grow a portfolio. When biasing towards a reduced cost, some aspects of a well-written patent application may also be sacrificed. Some of these items may be more critical to a patent that is likely to be enforced, whereas other items may be more valuable to building a robust patent family based on that disclosure. In any event, there is always an opportunity to pursue a patent with a strategic focus. The below non-exhaustive list includes some common items that may be included in a more comprehensive patent application preparation and prosecution process that aims for higher quality and other items that may be sacrificed in a more cost-sensitive patent application process. Of course, the approach here does not recommend removing or foregoing any items from the patent application process, but these items are available for consideration when there are budgetary constraints.

Implementing IP Management Software (Part II): Best Practices for an Improved Implementation

As discussed in Part I of this series, the process of implementing IP management software (IPMS) poses many complexities and dangers. To ensure as successful an IPMS implementation as possible, companies and law firms should apply best practices early on. The earlier they begin taking these steps, and the more deeply they dig into the issues, the greater their chances of avoiding the most common implementation pitfalls.

How Some Brands are Successfully – and Cost-Effectively – Combating Online Counterfeiters

Protecting brands and going after counterfeiters is like herding cats. There are hundreds, if not thousands, of ways that online counterfeiters illegally monetize brands. Companies have many ways to combat them, but it can traditionally take lots of time, cost, and resources to do it. Now there is a less publicized option in the United States which can deter counterfeiters, takes little time, and often even pays for itself. This ultimately can result in true deterrence of counterfeiters for a brand in online marketplaces. With online sales exploding, there has been a marked increase in sales of counterfeit products, despite various solutions available to combat it. Indeed, the industry as a whole will see over $1.7 trillion of sold counterfeit products on various online platforms each year—and that estimate, by the International Anti-Counterfeiting Coalition, was in 2015. Counterfeit sales result in the loss of millions of U.S. jobs and lost profits, and is by far the world’s largest criminal enterprise, with eCommerce counterfeit sales expected to grow to $6 trillion by 2024 in the United States alone. 

Implementing IP Management Software (Part I): Identifying Complexities and Dangers During Implementation

Imagine that your family has decided to build a new home. You’ve got the vision, but you need to call in the pros—a well-established, highly expert homebuilder with a cadre of architects, designers, contractors, and tradespeople. You’re relying upon the builder’s expertise to thoughtfully scope the project and prepare you for what lies ahead. This includes (a) helping you understand what financial and other commitments will be required of you; (b) educating you on challenges you’ll face along the way; and (c) highlighting available offerings that align with your vision….. Now imagine that your company or law firm has decided to implement intellectual property management software (IPMS) with a vendor. In a worst-case implementation scenario, you may feel like you’re reliving the above homebuilding saga. Indeed, IP teams often embark on the IPMS journey with great optimism. Once in the thick of implementation, however, they may experience a turbulent journey.

Exploring Joint Development Relationships: Part I, Prevent Common Problems

As investors and business-minded IP litigators, we see many situations where IP holders get the short end of the stick. But one stands out from the rest: joint development relationships. Too often we see great American startups losing their technology and competitive edge to joint development partners/investors with a front-row seat to everything. What follows is a multi-part series that we hope any company going down the joint development path will take to heart. We start with tips to prevent a problem. Future installments will focus on what companies can do after their “partner” uses the guise of venture investment to steal critical IP and know-how.

LES 2021 Royalty Survey Reports: Licensing Market Update, a Look Back, and an LES Royalty Valuation Method in the Making

On September 26, Licensing Executives Society (LES) USA and Canada published the LES High Tech Sector Royalty Rates & Deal Terms Survey Report 2021. In May of this year, the 2021 Global Life Sciences Royalty Rates and Deal Terms Survey results were released. Together, the releases culminated the intense efforts by LES during the COVID-19 pandemic in preparing and launching the Surveys and in analyzing the data, presenting the results and writing the Reports. Not only do LES Royalty Survey Reports provide an update on the licensing market in the past few years, they look into the dynamics of market evolution since the 2000s. The Reports offer benchmark royalty data by various categories, such as technology field and IP type, which serve as invaluable references for licensing professionals. The 2021 High Tech Survey Report is also the only data source in the IP industry that quantifies and publishes royalty rate premiums or discounts such as exclusivity premium and advanced-stage technology premium. Through identifying and quantifying the value contributions of key license parameters such as exclusivity, technology development stage and IP type, among others, the LES team aims to develop a build-up method for royalty determination, analogous to the build-up method in business valuation.

To Become Transaction-Ready, Startups Need IP Business Strategists

On the second day of the IPWatchdog LIVE conference held in Dallas, Texas, earlier this month, a panel of experts who advise startups and are passionate about the licensing business model discussed the challenges and opportunities presented by intellectual property. The panelists opened the discussion by describing their experiences with the biggest mistakes startups make in regard to patents. Ian McClure, Associate VP for Research, Innovation, and Economic Impact at the University of Kentucky as well as the chair of AUTM, identified two mistakes commonly made by the approximately 1,200 startups that are spun out from university research in the United States each year.

Advocating for Ethics-Driven Regulation for Blockchain Technologies

Blockchain technology can serve as a shared database ledger that tracks assets and transactions with little to no oversight but, in theory, unlimited users. Its potential applications spanning smart contracts to blockchaining intellectual property, indicate promise for fluid collaborations, efficient remuneration and thorough intellectual property management. However, there are still crucial issues, including privacy, compatibility, liability and jurisdiction that remain undefined. Moreover, because all fields necessitate specialized codes of conduct and ethics, if blockchain technology is expected to make a significant difference in society, then it too, deserves its own field of ethics, like artificial intelligence (AI), nuclear technology, biotechnology, and space exploration. Leading minds across disciplines need to contemplate how this technology can be shaped to have a positive impact, first by examining what this field is capable of doing and its potential consequences.

Panelists Highlight Increased Capital, Importance of Foreign Patents for U.S. Patent Monetization at IPWatchdog LIVE 2022

During day one of IPWatchdog LIVE in Dallas, Texas, a panel of speakers discussing current trends and the prospects of patent monetization going forward noted that the “heyday” of patent monetization was approximately ten years ago, with several large patent awards increasing interest in patent monetization. The panelists noted two major factors which presently act as a “glass ceiling” over patent valuations. First, the inter partes review (IPR) proceedings instituted at the U.S. Patent and Trademark Office (USPTO) in 2012 as part of the America Invents Act (AIA) has made investment in patents a riskier proposition.

Lessons for Brand Owners from the First CCPA Financial Penalty

International cosmetics retailer Sephora has agreed to pay $1.2 million to settle allegations that the company failed to cure violations of the California Consumer Privacy Act (CCPA). The settlement is the first CCPA enforcement action resulting in financial penalties from the California Attorney General’s office and elucidates the Attorney General’s view of how the use of website analytics and advertising trackers involve “sales” of personal information.