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Setting up an Intellectual Property Asset Management Council

Setting up an Intellectual Property Asset Management Council. by Michael H. Jacobs, Esq. mjacobs@crowell.com. Why Should a Company Seek to Protect IP?. Freedom to Operate Protection of Core Technologies (Including Right to Exclude Competitors) Licensing and Royalty Benefits

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Setting up an Intellectual Property Asset Management Council

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  1. Setting up an Intellectual Property Asset Management Council by Michael H. Jacobs, Esq. mjacobs@crowell.com

  2. Why Should a Company Seek to Protect IP? • Freedom to Operate • Protection of Core Technologies (Including Right to Exclude Competitors) • Licensing and Royalty Benefits • Enhancing Reputation as a Technology Company • Enhance “Brand” page 2

  3. Why Steps Should a Company Take? • Physical Security • Employee Agreements • Contracts • Education • IP Procurement Program page 3

  4. What Is Needed for a Procurement Program? • Management and Legal Department Support • Infrastructure • Invention Disclosure Forms • Staffing • Incentive Program • Intellectual Property Asset Management (IPAM) Council page 4

  5. What Is an IPAM Council? • Team Tasked with Reviewing Invention Disclosures Submitted by Employees • Authorized by Management and Legal to Approve or Reject Disclosures • Two Major Roles • Gatekeeper (as discussed above) • Spokespeople for Program page 5

  6. Who Should Be on an IPAM Council? • Representative from Legal • Preferably Registered Patent Attorney • Representative from Various Business Units • Include Major Technology Areas • Don’t Forget Other Groups • Level of Technical Skill • Don’t Just Include “Techies” • Enthusiasm and Commitment page 6

  7. How Should an IPAM Council Be Run? • Ground Rules • Set by Management/Legal • Chair • Preferably from Legal • Voting System • Approve • Reject • Send Back for More Information page 7

  8. The Importance of Enthusiasm • Technical Skills and Management Level Important • More Importantly, Members Should Be Sold on and Willing to Sell Program page 8

  9. Setting up an Intellectual Property Asset Management Council by Michael H. Jacobs, Esq. mjacobs@crowell.com

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