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1. Development and Management
of an
IP Portfolio
.
Ross A. Epstein
TechLaw LLP
Lunch and Learn
UCI Innovation Center
September 23, 2016

2. Why Me?
 Ross Epstein, Managing Partner, TechLaw
LLP, a unique IP and Business Boutique
 Five Years in Business Litigation in San
Diego
 Nine Years as Telecom Entrepreneur in
Eastern Europe
 Provide Advice and Counsel on All Aspects of
IP and Transactional Matters

3. Agenda
 What is IP?
 Developing an IP Portfolio
 Managing an IP Portfolio

4. CONVERT
INFORMATION
TO
ADVANTAGE

5. What is an Intellectual
Property Right?
Patents
Trademarks
Copyrights
Trade Secrets

6. What is a Patent?
The right to exclude, not to use
For 20 years
An Intangible Asset
A tool for defining markets

7. What is Patentable?
Compositions of Matter
Devices
Processes (especially
manufacturing)
Improvements

8. Examples
New Molecule for Clearing Air
New Abdominal Exercise
Machine
New Way of Manufacturing
Microchips
Better Way Of Regulating
Resistance on Ab Machine

9. Trademarks
Protects use of a mark on goods or services in
commerce
Difference Between ® and TM or SM
Any word, symbol, color, sound, packaging
Scope of rights defined by breadth of description

10. Examples
Word Mark
Word Plus Design
Logo only
Sound

11. Copyrights
Any work of authorship fixed in tangible form
Life plus 70 years for people – Current Rule
- Different rules apply to publications before
1977
Music, art, film, sculpture, architecture, hull
designs, software, books, dance

12. Examples
Photo of a Sunset
Computer code
Lyrics for a Song
Melody for the Song
Combination of Lyrics and Song

13. Trade Secrets
Any information, which gives a business advantage,
for which reasonable measures have been taken to
keep it secret, and is not generally known
Private remedy in State Court only
Can last indefinitely

14. Examples
Compilations
Formulas
Devices
Patterns
Ideas
Processes

15. Developing an IP
Portfolio

16. Developing an IP Culture
IP awareness – Education
Processes and Procedures
Incentive Programs
Best Practices in Labs
Secrecy/Confidentiality

17. Trade Secret Protection
Internal controls needed to prove
up trade secret status
Treat as secret
Employee handbook and
agreements
Common law right so no filing
opportunity

18. Patent Protection Procedures
Determine an invention worth
protecting
Prior art searching
Provisional vs. Non-Provisional
Application

19. Copyright
Protection Procedures
Mark your copyrighted materials*
File a copyright application
Without a Registration, cannot
enforce in the US
*Development and Management of an IP Portfolio © 2016
Ross Epstein

20. Trademark
Protection Procedures
Name business, product or service
Determine if eligible for
trademark protection
Mark your marks – TM or ®
File a trademark application – Use
or Intent to Use

21. Managing an IP
Portfolio

22. Technical Considerations
International Rights
Cost of Maintaining/Prosecuting
both US and Foreign
Direction of Technology (Patents)
Branding strategies (Trademarks)

23. IP Business Strategies
Competitive Advantage
Cross-licensing
Entry & Development of Export Markets
Licensing Royalties
Tax Advantages
Foreign Manufacture
Basis for Enterprise Valuation
M&A Opportunities

24. Summary
 Developing an IP Portfolio Requires an
Understanding of What IP Assets are and
How They Benefit the Business
 Managing an IP Portfolio Is How a
Business Generates Value From its IP
Portfolio

25. Thank You
www.techlawllp.com
TechLaw LLP
6265 Greenwich Drive, Suite 201
San Diego, CA 92122
Tel. (888) 989-8529 ext. 88
Fax (858) 430-3482
ross@techlawllp.com