Details of an Intellectual Property Inventory Database

For each intellectual property asset identified, confirm that the information is recorded in the intellectual property database including: a unique name for the asset; a non-technical description which describes the problem solved by the asset and how the asset also solves the problem; a unique internal tracking number; date of invention/reduction to practice; [...]

2021-10-08T14:27:00-07:00

Building a Robust Intellectual Property Inventory Database

Typically the process and building a robust intellectual property inventory database is to identify and catalog various forms of registered intellectual property assets (patents, trademarks, copyrights, trade secrets) contained within existing legal department documents. Cataloging should accumulate business information such as each assets non-technical description, current or intended use and stage of development. [...]

2021-10-08T14:27:11-07:00

Identifying and Organizing Intellectual Assets

In some organizations the effective development and use of innovation and intellectual properties are primary forces driving corporate success and shareholder value. However, many of the same organizations do not have a comprehensive base of information about the intellectual property assets they own, how these assets are being protected, and how they are [...]

2021-10-08T14:27:18-07:00

Intellectual Property Portfolio Management Processes

Protection Processes:  The above section addresses the processes by which intellectual assets are created. Coupled closely with their creation is the topic of protection. Since intellectual assets reside primarily in the minds of the company’s officers and employees, it is critical that they be schooled in what intellectual assets are, how valuable they [...]

2021-10-08T14:27:30-07:00

Step Five for Assessing M&A Business Opportunities

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 [...]

2021-10-08T14:55:30-07:00

Patent Prosecution Process Overview

From a patent committee standpoint there are business decisions related to the patent prosecution process that must be made in a specific timeframe. These are shown in the “Patent Processing Decisions” figure. What’s important is that the deadlines shown on the figure have to be carefully followed in order to preserve patent rights [...]

2021-10-08T15:08:18-07:00

Priority Setting Process for Patent Applications

Filing Priority Matrix Figure For large corporations once a decision has been made to file a patent the next issue associated is the priority of the filing so the legal department and external counsel prosecution schedules can be managed. The “Filing Priority Matrix” figure uses anchored scales to tie the time urgency of [...]

2021-10-08T15:08:55-07:00

Review Process for Invention Disclosures

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, [...]

2021-10-08T15:12:44-07:00

Elements Included in Invention Disclosures

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 [...]

2021-10-08T15:12:54-07:00
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