Mikk Putk, Patent attorney Sarap & Putk Patent Agency
How to evaluate IP risks &
What to consider when preparing IP strategy
29.09.2014 1 Mikk Putk
Why to evaluate IP risks and why you need IP strategy?
Potential risks
• General IP awareness
• Trademarks, logos, business & domain names
• Product designs, inventions & patents
• Contracts & agreements
• Copyrights, databases, software
• Trade secrets, confidential information
• Ownership
• Employee policies
• Valuation, competitors, infringements
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Most common USA specific IP risks
• Trademarks doesn’t meet the requirements for registration & protection
• Failure to show the trademark used in commerce
• There is no clear picture what type of Intellectual property company owns
• IP ownership rights are not regulated in contracts • Authors/Inventors are not agree to transfer their rights to the
company
• Froodom to operate is not clear • Freedom to use trademarks, copyrights is not clear
• Bogus IP demand letters, patent trolls
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Bogus IP demand letters
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6 http://www.standuptodemand.com/Content/docs/bad-letter-comparison.pdf 29.09.2014 Mikk Putk
Building an IP strategy • Educate management and employees to improve your knowledge of
protecting your IP
• Make a list, what kind of IP you have
• Compare what is most valuable for your business, well known product name, a new technical improvement or design solution
• Analyze the risks what happens if you do not protect your products, know-how and how it may harm your business if any of your original work you have created were to be used by another company
• Do some background research to determine similar solutions to check what is done before in the same field
• Monitor the activity of competitors
• Make a budget how much you can spend per year to protect your IP
• Link your IP protection strategy to your business plan
• Appoint a person who is responsible for your company’s IP management
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How to evaluate IP risks?
• Identification of risks
• Assessment of risks
– Probability?
– Impact?
• Risk management
– Mitigation strategy?
– Monitoring
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IP risks evaluation tool http://ipinstruments.com/
• Helps to determine to most critical issues • Gives the guidelines for your IP strategy development • Helps to learn about IP management • Gives comprehensive overview of current IP situation
• Simple, easy to understand and answer online
questionary • 2 pages color coded visual IP audit report that gives
within few seconds the clear picture about the IP situation in the company
• Saves lot of time and $$$$$$
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Example of two pages report
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T1: General IP awareness T2: Trademarks, logos, business & domain names T3: Designs, inventions & patents T4: Licensing, contracts & agreements T5: Copyrights, databases, software, internet T6: Trade secrets, confidential information T7: Ownership T8: Employee policies T9: Valuation, competitors, infringements T10: IP strategy & management
Total score: 48,45
Case Study - FutuTech
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T1: General IP awareness T2: Trademarks, logos, business & domain names T3: Designs, inventions & patents T4: Licensing, contracts & agreements T5: Copyrights, databases, software, internet T6: Trade secrets, confidential information T7: Ownership T8: Employee policies T9: Valuation, competitors, infringements T10: IP strategy & management
Total score: 48,45
Total score: 71,6 29.09.2014 Mikk Putk
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Thank you!
Contact Sarap ja Putk Patendibüroo, http://www.patent.ee, [email protected] Tartu: Margus Sarap, [email protected], tel 747 7058 Tallinn: Mikk Putk, [email protected], 53 039 088, Skype: mikkputk
https://www.facebook.com/Patent.ee
Presentations: http://www.patent.ee/et/esitlused/
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