Maximizing Intellectual Property Value is an authoritative, insider’s perspective on best practices for successfully negotiating and settling IP cases. Featuring partners and chairs from some of the nation’s leading law firms, these experts guide the reader through the various components of IP law, discussing strategies for successful negotiations and protecting one’s IP assets. From understanding the roles of key players involved and conducting due diligence to calculating damages and lost profits, these lawyers discuss the IP discovery process, frequently negotiated terms, common deal killers, protection strategies, and more. These top lawyers give tips on deciding when to settle vs. litigate, obtaining the proper documentation, evaluating contracts, building an IP portfolio, and identifying infringement risks. Additionally, these leaders reveal their strategies for avoiding common mistakes, planning defensively, and keeping abreast of change, The different niches represented and the breadth of perspectives presented enable readers to get inside some of the great legal minds of today as these experienced lawyers offer up their thoughts around the keys to success within this ever-changing field of law.
Inside the Minds provides readers with proven business intelligence from C-Level executives (Chairman, CEO, CFO, CMO, Partner) from the world’s most respected companies nationwide, rather than third-party accounts from unknown authors and analysts. Each chapter is comparable to an essay/thought leadership piece and is a future-oriented look at where an industry, profession, or topic is headed and the most important issues for the future. Through an exhaustive selection process, each author was hand-picked by the Inside the Minds editorial board to author a chapter for this book.
Chapters Include:
1. James F. Smith, Shareholder, Clausen Miller PC - “Negotiating IP From the Next Door
Neighbor’s Perspective”
2. Karen Kreider Gaunt, Partner, Keating, Muething & Klekamp PLL - “Building a Strong
IP Portfolio”
3. Randall K. Broberg, Partner, Allen Matkins Leck Gamble Mallory & Natsis - “The Impact of IP in Venture Capital Transactions”
4. Charles S. Baker, Partner, Porter & Hedges LLP - “The Intellectual Property Negotiation Process”
5. Jacob C. Reinbolt, Partner, Procopio, Cory, Hargreaves & Savitch LLP - “Intellectual Property as Intellectual Capital: How to Maximize the Value of Your IP”
6. Edward V. Filardi, Partner, Skadden, Arps, Slate, Meagher & Flom LLP - “Meeting the Goal for a Successful IP Settlement”
7. Paul L. Gale, Partner, Ross, Dixon & Bell LLP - “Successfully Burying the Hatchet”
8. Manjit Gill, Partner, Becker & Poliakoff PA - “The Categories of IP”
9. Grady M. Garrison, Member, Baker, Donelson, Bearman, Caldwell & Berkowitz - “Providing Value in an IP Transaction”
Appendices Include:
Appendix A: Inbound Biotech License Term Sheet
Appendix B: Software License Agreement
Appendix C: Pharmaceutical License Agreement
Appendix D: Settlement Agreement I
Appendix E: Settlement Agreement II
Appendix F: XYZ Patent Settlement Agreement
Appendix G: Consent Judgment and Permanent Injunction
Appendix H: Sample Settlement Agreement I
Appendix I: Sample Settlement Agreement II
Appendix J: Trademarks: A Protocol
Appendix K: Employee Acknowledgment and Agreement for Disclosure, Assignment, Confidentiality, Non-Competition and Non-Solicitation
Appendix L: Contractor Acknowledgment Agreement and Agreement for Disclosure, Assignment, and Confidentiality
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