Developing an IP Portfolio and Strategy

MATERIALS

A comprehensive printed workbook and reference materials is included in the price of the admission in admission to dinner and networking beforehand.

OVERVIEW

When developing a plan to capture and protect a company’s intellectual property (IP), it is important to understand the various stages involved, what stage the company is currently in, and what is coming next. There are three important stages that effect how a company will develop and protect its IP portfolio. The “Initial Stage” generally corresponds to the startup phase of the company, often before employees have been hired and before any IP has been captured or any protection sought. The second phase is the “Market Defense Stage” in which the company has reached the market and now faces competition, competition that may be knocking of or otherwise making use of the company’s IP. And the third stage is the “Maintenance Stage” that corresponds to when the company’s products and the relative status of the competitors in the market are established.

In this first workshop of the 3-part series, Noel Gillespie, partner at Procopio will explore the Initial Stage and what every company needs to do to ensure that:

the IP being created in the company is captured;
the company owns all such IP;
there is a plan to protect the company’s rights in the IP that will allow the company to effectively use the IP in the next stage – the Market Defense Stage; and
the company can successfully communicate all of this to an investor in a manner that conveys a well thought out strategy that will be effective in protecting market share and/or premium pricing.
Essential IP documents that will be discussed in detail are the:

NDAs – one way and mutual
Inventions Assignment Agreement
Invention Disclosure Form
Assignment
Contractor Agreement

The lessons learned here will enable participants to efficiently and effectively manage their Intellectual Property and avoid common pitfalls which may have long-term repercussions.

SPEAKER BIO

Noel C. Gillespie, advises clients on strategic patent portfolio development and implementation to protect their technology and achieve their business objectives. Noel’s practice focuses largely on startup and emerging growth companies, for which he provides counseling with respect to IP portfolio deployment, due diligence, licensing, enforcement, data privacy, and other business advice involving IP and technology concerns. He has extensive experience working with telecommunications companies, especially wireless telecommunications companies, wireless health, health information technology, medical devices, clean tech, and software and Internet companies.

Up Next in the IP Fundamentals Series- Save the Date

• August 22, 2018 Putting Your Profile to Work to Protect Your Premium Pricing
• September 12, 2018 Managing A Mature IP Portfolio