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IP 101: Maintenance of Your Intellectual Property

Thursday, May 26, 2011

By Rick Michaud Platinum Quality Author

IP licensing portfolio

If you have a licensing portfolio, that is, licenses with other parties which allow you to use their IP or vice versa, it's a good idea to periodically review the licenses to make sure everything is in order. If there are any missing copies, appendices, etc., make sure to obtain those copies.
Next, review the licenses and confer with the necessary people to make sure the licenses are being followed. Finally, review all outstanding draft licenses. If you are awaiting a draft from another party, follow up. Trademark portfolio
Portfolios of pending and registered trademarks should be reviewed on a regular basis to ensure pendency and/or registration is maintained. First, we recommend you review your docket and identify upcoming deadlines with respect to outstanding office actions in both the U.S. and foreign countries. We also recommend reviewing your docket to identify renewals and foreign filing deadlines that are coming due within the next year. Next, we recommend reviewing the portfolio to determine whether assignment data is correct. Lastly, we recommend you review your organization's portfolio to determine whether all marks are correctly labeled as a registered mark (®) or a common law mark (™). Patent Portfolio
With respect to patent portfolios, we recommend similar action items as discussed with respect to trademark portfolios. First, we recommend reviewing your docket for any outstanding office actions and identify any upcoming foreign filing deadlines. Decisions regarding responding to office actions and foreign filing will help plan the patent budget of your organization. Similarly, we recommend a review of upcoming maintenance fees to make decisions on whether patents should be maintained.
We also recommend reviewing assignment information recorded with the respective patent offices and updating such information as necessary.
The above-mentioned suggestions are meant as a starting point in a regular review of an IP portfolio. There are additional factors that should be considered and reviewed, including citation of prior art in pending patent applications, follow-up with decision makers regarding filing trademark and patent applications, and reviewing employment contracts to make sure confidentiality and IP assignment clauses are included therein. Running a company is virtually like the inner working pieces of a good-sized machine. One part stops working or snags, and KABOOM! the machine blows up.
How does this relate to business? Your company is made up of employees, services, repair/maintenance personnel, office equipment, IT, quality control, sales, marketing, hiring, etc. The most efficient method is to hold regular weekly staff meetings whereby agreements are formulated for the important upcoming week's functions and production.
Here are some suggestions or ideas on ways to conduct a staff meeting:

* Select a time and place that works so EVERY employee may be present and represented. * Come prepared! Adding a staff meeting each week will not only bolster production, but may also help your company work and feel more like a team. Craig Ferreira, CEO

Survival Strategies, Inc.

My business partner and I worked exclusively with this field from 1989 to 1994 and Survival Strategies was born.

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