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2014 | Book

Patents Read chapter Read first chapter

Intellectual Property in Consumer Electronics, Software and Technology Startups

Authors: Gerald B. Halt, Jr., John C. Donch, Jr., Amber R. Stiles, Robert Fesnak

Publisher: Springer New York

Part of: Springer Professional "Wirtschaft+Technik" , Springer Professional "Technik" , Springer Professional "Wirtschaft"

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About this book

This book provides a comprehensive guide to procuring, utilizing and monetizing intellectual property rights, tailored for readers in the high-tech consumer electronics and software industries, as well as technology startups. Numerous, real examples, case studies and scenarios are incorporated throughout the book to illustrate the topics discussed. Readers will learn what to consider throughout the various creative phases of a product’s lifespan from initial research and development initiatives through post-production. Readers will gain an understanding of the intellectual property protections afforded to U.S. corporations, methods to pro-actively reduce potential problems, and guidelines for future considerations to reduce legal spending, prevent IP theft, and allow for greater profitability from corporate innovation and inventiveness.

Table of Contents

Frontmatter

Overview of Intellectual Property Rights

Frontmatter
Chapter 1. Patents
Abstract
A U.S. Patent is a contract between the United States and the inventor(s) in which the owner is granted a limited monopoly to exclude others from making, using, selling, offering for sale, or importing a patented invention into the United States during the term of the patent. In exchange for these exclusive rights, the inventor is required to disclose the full and complete details of the invention to the public. The theory behind the patent system is that if the public has access to complete inventive disclosures, it will develop new and better ways of solving the same problems.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Chapter 2. Trade Secret Protection
Abstract
Trade secret law provides a mechanism for protecting proprietary and sensitive business information. A trade secret, by definition, is information that has economic value and is secret. There are no formal application requirements to obtain a trade secret. Unlike patents, there are no statutory requirements that a trade secret be novel, useful, non-obvious, and there is no examination process. Trade secret protection arises once the appropriate steps are taken to create and maintain a valid trade secret. Trade secrets are not subject to a predefined term, and can be maintained for an indefinite period of time.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Chapter 3. Trademarks and Trade Dress
Abstract
Use of symbols or signatures to identify the source of goods has been around since people first started trading and selling goods such as pottery, weapons, and clothing thousands of years ago. The purpose of these marks, to indicate the product’s source, has not changed to this day. What has changed, especially in the last one hundred years, is the protection afforded to trademarks. Currently, the United States protects trademarks under the Trademark or Lanham Act, state law, and common law.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Chapter 4. Copyrights
Abstract
The federal Copyright Act protects authors’ creative works. “Copyright protection subsists… in original works of authorship… fixed in a tangible medium of expression….” Copyright automatically arises upon creation and fixation of an original work. In the high technology electronics industry, fixation of an original work may include advertising and marketing materials or packaging, schematic circuit diagrams, blueprints and software.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Chapter 5. Domain Names
Abstract
Domain names are essential to promoting corporate identity and product awareness in the modern era and should be regarded like any other valuable corporate assets. A domain name is a string of unique characters used as an address to identify a particular computer or server on the Internet. For example, epa.gov is used to identify the United States Environmental Protection Agency website, uspto.gov is used to identify the United States Patent and Trademark Office website, and siemens.com is used to identify the Siemens Company global website.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Chapter 6. Intellectual Property Issues in Labeling and Marketing
Abstract
Apart from whether a mark can be protected under the trademark law, there may be government regulations that can restrict or prohibit use of the mark in advertising or labeling any product(s) with the mark. Anyone using or selecting a trademark in the high-tech consumer electronics or computer software industries should be aware of the nature and kind of regulations that may be applicable.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles

Implementing Intellectual Property Practices, Procedures and Strategies

Frontmatter
Chapter 7. Seven Basic Steps to Getting Started
Abstract
Confidential Disclosure Agreements, which are also referred to as Non-Disclosure Agreements or NDAs, refer to a contract that protects confidential or trade secret information (“Confidential Information”) from disclosure to third parties. NDAs are commonly included as a part of an employment contract, and are also included in, or form, a separate agreement with vendors, contractors, and sometimes customers.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Chapter 8. Deciding Between Patent or Trade Secret Protection
Abstract
Many companies use both patents and trade secrets to protect inventions. However, since these two forms of protection are mutually exclusive in a fundamental regard (i.e., whether or not to disclose an invention), companies must often chose between the two forms of protection. Each has advantages over the other that should be carefully considered when forming the appropriate intellectual property strategy.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Chapter 9. Intellectual Property Strategies for Software: Patent and Copyright Protection
Abstract
Patent protection and copyright protection for software are not mutually exclusive. Both can be obtained simultaneously because whomever creates the code is both the author (for copyright protection purposes) and the inventor (for patent protection purposes) of the software. As previously mentioned in earlier chapters, copyright protection only covers the expression of the code, meaning only the “word for word” copying of the code is protectable under copyright. Copyright does not protect the overarching idea behind the innovative code, which often times is where the true commercial value of the software lies. Thus, there is a need for patenting innovative software ideas. Patents protect the particular idea, or invention, of the software.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Chapter 10. Developing and Managing an Intellectual Property Portfolio
Abstract
It is important to have a well organized and focused intellectual property management program in place in order to properly develop and enforce a company’s intellectual property rights. Factors that should be considered when developing an intellectual property portfolio management program include: (1) strategic considerations in developing an IP portfolio; (2) administrative issues associated with managing the IP portfolio; and (3) ongoing IP diligence protecting rights and pursuing others.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles

Monetization of Intellectual Property Portfolios

Frontmatter
Chapter 11. Intellectual Property Portfolio Acquisition
Abstract
In addition to the traditional intangible corporate assets such as brand value, corporate reputation, franchises and human capital, IP assets (patents, trademarks, copyrights, and trade secrets) have emerged as important and valuable corporate assets. IP rights can be bought and sold like any other business commodity.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Chapter 12. Valuing Technology Companies
Abstract
Simply stated, the value of a business or asset is represented by the future economic benefits that will inure to a buyer. The value of a business depends on an estimate of the future economic benefits, the period of time for these benefits and the rate of return required by the buyer based on the industry and company specific risks.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Chapter 13. Financing and IP: Equity Financing, Debt Financing, Collateralization and Securitization of Intellectual Property Rights
Abstract
From the moment of inception of a great idea, there is an inclination to protect and nurture that idea, striving to turn it into a commercial success. At the start of an entrepreneurial adventure, IP rights are procured on the idea and a business is formed. As the new company moves from the design and conceptualization stages, through product development and finally to market, there are many stages of growth which all require financing in some capacity.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Chapter 14. Licensing of Intellectual Property Rights
Abstract
Licensing IP can be used to learn about and use others’ technology. IP-holders may exclude others from using their protected IP. Licensing agreements are effectively grants made by the IP-holder to others that grant access to the protected technology and trade secret information, while creating a revenue stream for the IP-holder. For example, a high-technology consumer electronics company may need to license proprietary manufacturing equipment from others.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Chapter 15. Patent Pooling and Synergistic Business Relationships
Abstract
Patent pools can be beneficial and can enhance business relationships in a synergistic way, i.e., the parts of the whole relationship interact in such a way as to produce a joint effect—a juxtaposition—that is greater than the sum of its parts acting individually. When entities work together, and pool their IP assets, innovation can flourish. It is important that the pooling of patents promote innovation and not deliberately stifle competition in the relevant technology market.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Chapter 16. Divestiture
Abstract
In today’s high-tech world, it is readily apparent that transactions involving IP assets require a combination of technical, marketing, business and legal expertise. These assets serve as both strategic and financial tools for growing a business. An industry-focused IP portfolio can be worth a substantial amount of money if properly managed and utilized. However, IP assets that are not contributing to the success of a company are sometimes ignored and neglected; these assets may not be achieving a good return on investment. Simply because IP assets are no longer relevant to a company’s business plan does not necessarily mean the IP is worthless. Rather than ignore the underutilized IP, the company could monetize the asset through divestiture, removing the IP from the portfolio and converting the asset into cash.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Chapter 17. Enforcement and Infringement of Intellectual Property Rights
Abstract
After a company invests the time and resources into developing and protecting its intellectual property rights, it is important to police the market to ensure that no competitors are improperly benefiting from such intellectual property investments. Policing of intellectual property rights can be broken down into a four step process.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Chapter 18. Monetization Strategies for Startups, Incubators and Accelerators
Abstract
Building a successful start-up is rewarding, and there are many challenges to be faced as the start-up moves towards becoming profitable.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Chapter 19. Monetization Strategies for Universities and Research Centers
Abstract
For universities and research entities, translational research is both a source of revenue generation as well as a source of academic notoriety. The ultimate downstream purpose of translational research is two fold. First and foremost is that translational research is intended to solve real-world problems via practical application of newly developed or innovative technology. Second, translational research is meant to have commercial value and to generate unrestricted income for the university; either through the development of a marketable product, or through licensing agreements. Monetization of translational research efforts can be highly lucrative. There are a wide variety of ways to generate revenue from research. Furthermore, there are strategic and synergistic business relationships that can be formed between a university or research entity and industry partners or corporate sponsors.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Chapter 20. Non-Practicing Entities
Abstract
There are a myriad of definitions as to what exactly a non-practicing entity (NPE) is, but generally, it is a person or company that amasses patent rights. The patents typically belong to a single technological area, or a grouping of related technologies. The NPE does not practice the patents, meaning that the NPE does not produce any goods or provide any services based on the patents rights that are held.
Gerald B. Halt Jr., Robert Fesnak, John C. Donch, Amber R. Stiles
Backmatter
Metadata
Title
Intellectual Property in Consumer Electronics, Software and Technology Startups
Authors
Gerald B. Halt, Jr.
John C. Donch, Jr.
Amber R. Stiles
Robert Fesnak
Copyright Year
2014
Publisher
Springer New York
Electronic ISBN
978-1-4614-7912-3
Print ISBN
978-1-4614-7911-6
DOI
https://doi.org/10.1007/978-1-4614-7912-3