How to Grow the Value of Your
Intellectual Property Assets

By Attorney Harris Brotman, PhD, JD
©1998, H. Brotman
E-mail: hbrotman@petrielaw.com

t is clearly not in a company’s best interests to neglect the value of its portfolio of ideas. Ideas may take the form of trade secrets, trademarks, marketing ideas, inventions, and licensing opportunities. There is real value in proper management (i.e. discovering, developing, protecting, enhancing the value) of intellectual property assets. Unfortunately, I have seen the value of Intellectual property assets at some companies silently bleed or merely slip through the company’s fingers. The opportunity to identify problem areas and areas in need of improvement centered around a company’s business needs will always make a handsome return to the bottom line.

A few years ago I wrote a letter to one of our business clients, a 300 employee company that makes medical equipment. It appeared to me that the company was wasting its intellectual property assets, so I proposed a trouble shooting program to identify and nurture those assets. Without getting too technical here, some of the key points of that letter are outlined below. Whether your company has three employees or a thousand, whether it makes medical equipment, software or whatever, this advice should prove relevant to any well managed business.

1. Proper Management of Intellectual Property Assets: Processes and procedures should be implemented to identify and ensure that IP assets are properly managed, i.e. developed, maintained, protected and value enhanced.

2. Trade Secrets and Proprietary Information: The business manager and attorney should review all substantive aspects relating to preserving trade secrets and handling proprietary information, including such related matters as proper handling of confidential information vis-a-vis export controls; assessment of how significant trade secrets and other proprietary information can be to the business and to the extent that they are significant, assessment of protection strategies, awareness training programs, general security measures, etc.; assessment of non-disclosure and confidentiality agreement terms in general and, in particular, if any joint development situations exist; assessment of consulting agreements for adequacy of protection of information provided and developed; assessment of approval authorities for supplying and accepting confidential information and sufficiency of contracts and contracting/tracking practices.

3. Agreements: Inventory of all license agreements (patent, trademark, know-how, etc.) including licenses granted by and to the company, check for assignability; review of terms, including royalty and confidentiality provisions; inquire about any breaches or threatened breaches of any of the license agreements; review employee agreements regarding confidentiality, nondisclosure and nonuse, invention assignment, copyright assignment; be certain all key employees have executed agreements; review agreements with independent contractors; review third party confidentiality agreements (both as disclosing and receiving party); review of non-competition agreements and check enforceability under appropriate law.

4. Patents: This pertains to all aspects of identifying, acquiring, maintaining and licensing of utility and/or design patents. Proper management includes review of patent/technology licensing in and out, process and guidelines; assessing record keeping; review of current disclosure procedures in relation to business applications of the inventions and/or disclosure to customers; determination of all locations where product development is done and how uniform and adequate the agreements are with employees for ownership of inventions.

In addition to the above trouble shooting advice, Petrie & Associates can assist a company with several other areas related to Intellectual Property:

Due Diligence: We can assist with Intellectual Property due diligence. This is especially crucial if your company plans to acquire an ownership interest in a "start up" or "early stage" company. This work requires an analysis of the intellectual property rights embedded in the ideas of the target entrepreneur.

Trademarks: Trademarks, or trademark licenses, may be one of a company’s most valuable assets. This is an extremely important area. Inattention to detail here can result in loss of trademark rights, or allow a court to stop your company from selling a product or providing a service rendered under a trademark that has developed great value to the company over time and which could prove devastating to a company. This may even include a very broad international perspective.

Copyrights: Issues such as copyrightability and "works for hire" are quite technical and must be carefully assessed to ensure the retention of the company’s intellectual property rights in various writings, or even software, developed by employees, independent contractors, or third parties.

Negotiating and Drafting of Agreements: We can assist a company by negotiating and drafting the terms and conditions of key licensing agreements and "technology transfer or sharing agreements".

If we can assist you or your company with these or any other Intellectual Property questions you may have, please do not hesitate to contact Petrie & Associates at any one of our offices.

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Attorney Harris Brotman is registered to practice before the United States Patent and Trademark Office in Washington, D.C. and is the lead attorney with Petrie & Associates Intellectual Property division. He earned a PhD in Science in addition to a Juris Doctor degree in law and is a member of The American Intellectual Property Association and Association of University Technology Managers.

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