Table Of ContentGUIDE TO INTELLECTUAL PROPERTY
STEPHEN JOHNSON studied genetics at Cambridge University before qualifying as
a solicitor in 1982. He subsequently also qualified as an attorney and worked in
the US for Kirkland & Ellis LLP for over thirty years, most recently in San
Francisco. He now focuses on intellectual property (IP) from a business
perspective and also consults for the US charity One Mind on IP and other
policy issues affecting neuroscience research. In 2015 he was named as one of
the world’s leading IP strategists by Intellectual Asset Management in its IAM
Strategy 300 survey.
GUIDE TO INTELLECTUAL PROPERTY
What it is, how to protect it, how to exploit it
Stephen Johnson
The Economist in Association with
Profile Books Ltd. and PublicAffairs Copyright © The Economist Newspaper Ltd, 2015
Text copyright © Stephen Johnson, 2015
First published in 2015 by Profile Books Ltd. in Great Britain.
Published in 2015 in the United States by PublicAffairs™, a Member of the Perseus Books Group
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Library of Congress Control Number: 2015939618
ISBN 978-1-61039-461-1 (PB)
ISBN 978-1-61039-462-8 (EB)
First Edition
10 9 8 7 6 5 4 3 2 1
In memory of Glen Hess
A great business lawyer, and a great human being
Contents
List of figures and tables
Preface
1 An introduction to intellectual property
What is intellectual property?
Forms of protection
Building IP into a business strategy
2 Patents
What kinds of invention can be patented?
When should a patent be obtained?
The rights granted by a patent
Remedies for patent infringement
Validity and value
3 Trademarks
How is a trademark obtained?
The registration process
The rights of a trademark owner
Remedies for trademark infringement
Value and strength
Trade dress and passing off
Using other people’s trademarks
4 Copyright
How is copyright obtained?
The rights of the copyright owner
Remedies for copyright infringement
Value and strength
Open-source and copyleft software
Authors’ moral and other rights
Clearing rights
5 Design rights
How are design rights obtained?
International protection
Other forms of protection
Value and strength
6 Trade secrets
What is a trade secret?
How are trade secrets created?
How are trade secrets protected?
Trade secret versus patent
Unauthorised use or disclosure
Value and strength
7 IP and the internet
Trademark and domain name strategies
Websites, e-commerce and privacy
Cybercrime, trade secrets and hacking
Copyright and piracy
An internet infringement strategy
8 Who owns IP?
Patents
Trademarks
Copyright
Design rights
Trade secrets
Corporate structure and taxation
9 What IP costs to obtain, maintain and enforce
Patents
Trademarks
Copyright
Design protection
Trade secrets
10 IP’s role in protecting product sales
Patents as a barrier to entry
Trademarks as a barrier to entry
Copyright as a barrier to entry
Design rights as a barrier to entry
Trade secrets as a barrier to entry
11 IP as a revenue generator
Strategic management of patents
The value of a patent as a litigation asset
Patent assertion entities
Deciding a strategy
Trademark licensing
Copyright and revenue generation
12 Licensing transactions
Crucial terms
Issues specific to particular types of licence
Liability
Bankruptcy
Legal limitations on licence terms
13 The market for IP: how IP rights are bought and sold
Patents
Trademarks
Copyright
Transferring IP rights
Acquiring IP rights
14 Valuing IP
Accounting treatment of intellectual property
Valuation methodologies
Valuing early-stage technologies
Valuing brands
15 Using IP to raise finance
Legal process and technicalities
Where IP is used as collateral
International developments
IP and raising equity
16 Developing an IP strategy
IP audit and establishing ownership
Risk mitigation
Protecting a company’s products
Strategic IP management
Governance
Executive summary
Glossary
Notes
Useful resources
Index
Description:London: Economist Group, 2015. — 352 p.Intellectual Property (IP) is often a company’s single most valuable asset. And yet IP is hard to value, widely misunderstood and frequently under-exploited.IP accounts for an estimated $5trn of GDP in the US alone. It covers patents, trademarks, domain nam
