Step 5. Determine the Existing Scope of Intellectual Asset Protection. To complete this step the future entity’s management team must examine the scope of technical know-how, trade secrets, patents, copyrights, trademarks, and existing licenses. Each assessment requires expert opinion and is described in very general terms below: Technical know-how. The scope of [...]
Similar to any investment that an organization undertakes, the value of the organization’s licensing-in arrangement should be quantified to ensure that it generates the required return. Well-known metrics such as economic-value-add can assist in this analysis. The EVA or economic value added is simply the profit minus the capital charges. Profit can be [...]
Invention Disclosure Evaluation Process Once an inventor fills out an invention disclosure is typically submitted to an entities’ patent committee or legal counsel for review. The “Invention Disclosure Evaluation Process” figure shows an overview of the process. The reviewing personnel assess the invention for its likely novelty, relative performance, relative cost to produce, [...]
Also listed in the disclosure should be: The most relevant potential application of the invention. Usually a company will supply a checklist of its business units along with an option to specify uses outside the company’s current product lines. A concise description of the invention. A clear description which explains the idea and [...]
Previous sections of this book have dealt with the management of the research and development / innovation processes using both traditional stage-and-gate processes as well as a lean / agile processes. It is during those processes that IP creation and documentation occurs. Invention Disclosure has to be conducted real time to be effective [...]
Deciding between a patent and a trade secret as a way to secure a sustained advantaged competitive position is not a black and white decision, but one where various shades of grey must be considered. As such a “Preferred Mode Matrix” is created. A team of experienced cross functional personnel, typically found in [...]
An important process of intellectual property management is to make the appropriate selection between what to patent versus what to hold as a trade secret. A recent IPO survey indicated that trade secrets are the really important intellectual assets of a company vis-à-vis patents, because patents have limits. Trade secret protection operates without [...]
Intellectual Property Use Matrix Tying these forms of intellectual property and intellectual assets to business needs and activities are shown in the “Intellectual Property Use Matrix” figure. In this figure the four main business silos of executive and strategic management, manufacturing, operations, and financial are shown along with the typical ways in which [...]
License agreements: Should the company consider licensing its proprietary information to a third party, it must take all reasonable steps to ensure that the third-party will treat the information as confidential and that that party will use that information in accordance with the agreement fashioned between the parties. Thus, before disclosing any of [...]
Once answering the above questions the process of protecting trade secrets continues with the development of a trade secret security package. Utilizing written security agreements are the keystones to effective trade secret security. Such agreements take a variety of forms and should include employee training. The reasons for having such agreements are (1) [...]
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