Posts in Business

There are two main business strategies of offshoring, called the captive form model and independent contractor model. The captive firm model is when a company hires their own employees and managers in the foreign country, train the local people and have exclusion control and responsibility over those people. The foreign entity works for the single firm and requires a very large investment and the liability falls on that firm to open the office. As a result, the firm has greater control over the people and personnel, training, and confidentiality.

Having an attorney draft a licensing agreement, or a licensing expert negotiate a licensing agreement, from start to finish is obviously the best way to proceed. But there will always be some who will choose to proceed on their own to negotiate a licensing and/or draft an agreement. This can certainly be dangerous, but sometimes there is no alternative given financial constraints. Whether you are going to represent yourself or work with an attorney or licensing professional, it is a worthwhile endeavor to engage in some strategic thinking, which absolutely must be the precursor to any memorialized deal.

As the world continues to grow and international trade on a multi-continent level has become the norm, protecting a company’s name is one of the most important things a company can do, regardless of their size or international standing. Due to what has become almost “organic” international growth for most companies, the use of trademarks owned by U.S. Companies within Europe has grown exponentially in the last 5 years. Consequently, the use of distribution licenses across Europe has also expanded massively.

I present ten scenarios for dealing with what is usually the most contested issue in pre-collaboration agreement negotiations – the ownership of foreground IP. These scenarios range from preferably avoiding joint IP ownership altogether to more complex situations involving joint IP ownership with both nonexclusive and exclusives licenses, as well as nonexclusive and exclusive cross-licenses, and even scenarios based on defining the parties’ respective fields of endeavor.

A trade secret is defined as any valuable business information that is not generally known and is subject to reasonable efforts to preserve confidentiality. Generally speaking, a trade secret will be protected from exploitation by those who either obtain access through improper means, those who obtain the information from one who they know or should have known gained access through improper means, or those who breach a promise to keep the information confidential. While virtually every business has at least some trade secrets, they are quite fragile because they protect information and resources that are secret, which necessarily means that protection is lost if and when the secret becomes publicly known. For that reason, when other forms of intellectual property protection are available, such as copyright or patent protection, one should carefully consider the wisdom of relying only on trade secret protection.

The popular media’s reports of the demise of IP rights (especially patents) are premature and greatly exaggerated. IP remains valuable to enterprises of all sizes and types. Further, the notion of open innovation, which reflects not only the social nature of man but today’s technological reality, is here to stay. As a result, IP law practitioners will continue to be called draft, review and negotiate collaboration-type agreements where business, engineering and other legal personnel will continue to insist on the “fairness” of joint IP ownership. Such insistence should always be met with skepticism for its need. And, when such joint IP ownership is unavoidable, its consequences and mechanics must be addressed. In sum: If you must do it, don’t half-a$$ it!

It seems the since-kindergarten, ingrained notion of sharing supersedes our B.S., M.S., J.D., Ph.D. and/or M.B.A. training in this respect! Pressures to “get the deal done” by our business and engineering clients, as well as the corporate lawyers who may be supporting the deal and always think it’s a good idea, result in IP law practitioners’ capitulation into drafting joint IP ownership clauses. We should have learned long ago, however, that while splitting the baby (i.e., joint IP ownership in this case) may sound “fair” and give us psychological comfort, in reality it is usually undesirable, unwieldy and perhaps unworkable.

A well-developed patent portfolio offers you the ability to defend your R&D investments against competitors, creates freedom to move into new markets, deters corporate asserters and can eliminate licensing fees. How do you produce such a portfolio? Start by identifying potential threats, then balancing reasonable patent portfolio investment with revenue retention, and finally calculating your risks. This post presents an approach for modelling the value of a strategic patent portfolio for companies in the high-tech market (eg, cloud computing, semiconductors, mobile and networking). The biotech and chemical models are similar, but require modification for their specific patent risk challenges.

Last month CPA Global announced the acquisition of the Austin, Texas based search and analytics software provider Innography. While some in the industry have been quick to judge what on the surface appears to be an unlikely partnership, even suggesting that it spells the demise of Innography, the exact opposite seems to be the case, with Innography set to launch new offerings and enhancements over the next several months.

North Castle Partners announced the sale of Octane Fitness, LLC, a leading manufacturer of zero-impact cardiovascular fitness equipment, to Nautilus, Inc. (NYSE: NLS) for a purchase price of $115 million. Those familiar with the patent industry will readily recognize the name Octane Fitness. It was Octane Fitness, the much smaller company that successfully sued and prevailed in a patent infringement lawsuit against ICON Health & Fitness. The case would go all the way to the United States Supreme Court on the issue of attorneys’ fees.

As card-present transactions become less susceptible to fraud because of the shift to EMV chip card technologies, it’s expected that more fraud will shift to online platforms where it’s still relatively easy to input fraudulent financial information without being noticed; some reports indicate that online retail fraud in the U.S. alone is expected to rise by 106 percent in three years after October’s EMV liability shift from banks to business owners. One way that businesses conducting sales online can get themselves ready to respond quickly to fraud is through effective planning prior to major sales events like Black Friday or, perhaps more important when thinking about e-commerce, Cyber Monday. If those workers handling fulfillment of online orders are more aware of expected sales projections, it will help them be more aware of clues that the business might be a target for fraud if actual sales figures differ wildly.

While the startup probably had an initial 100% market share due to a temporary de facto monopoly, such share rapidly decreases as soon as others start selling to the same customers. Worse, many times, one of those fast followers is a large entrenched company that has deep R&D teams, seemingly unlimited budgets, well-known brands and established distribution channels in many key geographies that took decades to build. They can play catchup really fast. In other words, the only thing going for the startup at that point (assuming it could not possibly achieve this scaling up over such a short period of time) is the uniqueness of its technology and its ability to out innovate others. This in turn is only true if the new technology it brings to market is adequately protected against free riders; otherwise one is simply doing others’ bidding and subsidizing their R&D… In short, innovation without protection is simply a form of philanthropy!

CUBAN: I have invested in more than 150 companies and never has having or not having a patent impacted the final decision. Small businesses can and do become great without patents. The problem for little guys with patents is that no patent lives in a vacuum. Particularly with software and technology. There is always a work around and you can always find a patent that enables the big guy to sue the little guy. So with just few exceptions the current system doesn’t protect anyone.

Topping the list of US Unicorns (a pre-exit startup with a valuation exceeding $1 billion) are high flyers like Uber at $51 billion and Airbnb at $25.5 billion, followed by companies that are mostly concentrated in three industries: Consumer Internet, E-commerce and Software. Overall, we found out that 30% of US Unicorns have no US patent assets at all! About 62% of US Unicorns have only 10 or less (issued and pending) US patents in their name; these companies account for more than $157 billion in collective valuation and $25 billion in combined funding.

The same technology that makes it easy for you to stay in touch with the office also makes it easy for nefarious individuals to hack your communications and into our devices. Because office computers are generally connected to the same network if a hacker is able to gain access to one machine that shares the network connection they can potentially, and sometimes quite easily, gain access to all of the machines and information on the network. What this means is that computers on the same Wi-Fi network can potentially have access to any unencrypted information that pass through that network.