Vertex Intellectual Property Strategies Inc. F.A.Q.

Listed below are commonly raised intellectual property and technology commercialization questions. Click on the links provided to obtain information about these typical intellectual asset issues.

Intellectual Property (IP) Management

Intellectual Property (IP) Strategy

Technology Commercialization

Intellectual Property (IP) Management

I think my intellectual property may be at risk because my staff doesn't understand intellectual property. What can I do?

Although IP can be compromised by deliberate illegal acts, the most common way in which IP is lost is via inadvertent disclosure. This can come about through a lack of understanding of either what constitutes IP or what its value is to the enterprise, or perhaps because the persons involved do not know what a disclosure is. The crux of the matter is lack of knowledge and the bottom line is that you have lost a valuable resource. The solution is training - provide your staff with the information they need to do what you need and what they want to do for you.

Vertex offers customized seminars covering a variety of IP issues that will help bring your staff up to speed. If you don't see exactly what you want, contact us so that we can discuss your needs and respond with a training package that meets your requirements.

I hire contractors to work on development projects that often produce intellectual property. What do I need to do to protect my rights to exploit the intellectual property I pay for?

It is important to remember that the rights of contractors differ from those of employees with respect to IP ownership. Employees have generally assigned their rights to their employer as a condition of employment. Contractors on the other hand are governed by the terms of their contract. So you must deal with IP ownership rights in your agreement with your contractors.

Vertex offers seminars designed to help get you up to speed on these and other issues.

What constitutes intellectual property?

Many people think 'patents' when the term IP is mentioned. But IP comprises much more than just patents. Copyrights, industrial designs, trademarks, trade secrets are all potential elements of your IP portfolio. Learn about the basics of IP with one of Vertex's customized seminars .

How do I determine what intellectual property I own?

Because IP is comprised of more than just patents, the compilation of an organization's IP can be more challenging than just creating a list from existing records. In particular, trade secrets, which often constitute a large fraction of an organization's IP, are typically not documented and are often not explicitly known to management. Ferreting out and cataloging these potentially valuable assets is a task that Vertex can help you with.

How can I best manage my intellectual property portfolio?

There are a number of elements to effective IP management, including an appropriate management structure, staff training and method for tracking the various elements that comprise your IP portfolio. Vertex offers a number of services that may be of help to you in this activity - seminars to designed to bring staff up to speed, consulting and coaching for new IP managers, and IP tracking software to name just a few.

What steps can I take to protect my confidential information?

Many managers assume that employees automatically know what information is confidential and what is not. This can often occur when organizations have grown in size from a small group of people that 'knew everything' to a larger entity in which the knowledge of the business is more compartmentalized. Thus this assumption can be risky because although the vast majority of workers want to do the 'right thing', the commercial significance of some information is not readily apparent to everyone. A policy of marking documents to indicate their level of confidentiality is therefore helpful for everyone. Vertex can help you audit and classify your business information .

I manage a research organization and I need to demonstrate the value my function provides to my supporters. How can I accomplish this?

The benefits provided by research organizations typically include both financial returns to the organization supporting the work and social benefits to society in general. However, it is possible and appropriate to quantify both facets of a research organization's return on investment. Vertex has developed a method to analyze and capture the contributions of both types of benefits provided by research work - the "VTV Analysis" method.

Our portfolio of intellectual assets is growing. What can I do to effectively manage the portfolio now and as it continues to grow?

Many companies start the management of their IP using paper records or simple spreadsheet programs. However, as their portfolios grow, the volume of information can quickly exceed the capabilities of these approaches. Vertex has developed a software package that can effectively handle the IP information volume generated by a typical small to medium sized enterprise.

Intellectual Property (IP) Strategy

What is my intellectual property worth?

This question is often asked, given the prominence of intellectual assets in the worth of businesses in the knowledge based economy. Unfortunately, there is no simple answer. There are a number of methods for valuing IP, and the one to use depends on the situation and purpose for making the valuation. Vertex has helped organizations determine the worth of their IP portfolios and has developed a methodology for making these types of assessment.

Is my intellectual property patentable ?

To be patentable, an invention must meet certain criteria. Is it novel and inventive or does it just represent a simple incremental improvement to an existing technology? Has it been reduced to practice? That is, can the invention actually be implemented? And has it been disclosed? That of course raises the question of what constitutes disclosure. Vertex can help you with these questions and more and also suggest patent agents, should this be appropriate.

Should I patent my intellectual property ?

Many people assume that any invention should be patented. However, this is not always the case. Patents are but one element of an IP portfolio and are very much a two edged sword. While a patent provides legal protection for your invention, it also requires disclosure of sufficient information for a person reasonably skilled in the art to duplicate your invention. So for technologies that can be easily duplicated without transgressing the claims of the patent, such protection is limited. There may be better ways to safeguard your IP in these situations. Vertex can review your portfolio and suggest an appropriate course of action.

Who are the major players in my field? What patents to they have?

Patenting activity in a field can provide valuable competitive information to a business. Vertex can provide a comprehensive patenting mapping service that will clearly show who the competition is and how their IP correlates with yours.

We have a portfolio of technologies with significant commercial potential, but there is a key element missing. How can we acquire the missing technology without having to undertake the development ourselves?

Companies often augment their existing technologies by acquiring rights from others (i.e. licensing) or through means such as contract development. Vertex can assist you with determining which approach would best suit your specific needs and then help you accomplish the acquisition.

Technology Commercialization

What is an intellectual property license?

An intellectual property license permits the licensee to use the licensed IP under specified conditions for a specified fee, typically a royalty. The license can be exclusive or non-exclusive and can be partitioned by geographical area, country, or end use, for example. Vertex can provide a wide range of services related to licensing , including short seminars on the basics of licensing.

How do I license intellectual property that I have developed?

There are a number of steps to be accomplished in the development of an intellectual property license. Vertex has in fact developed a seventeen step process to help guide its clients through the task of licensing their IP.

Why would I want to license my intellectual property?

Companies license their intellectual property for a variety of reasons, but typically the ultimate goal is to realize a return on their investment in the IP development. For example, a marketable technology may have been developed that is outside of the bounds of the company's core business, but is still commercially valuable. Or the company's product may be difficult to transport long distances and yet the company still wants to penetrate distant markets with its products. There are many other reasons. Contact Vertex to have a licensing professional review your particular situation and provide guidance on the most appropriate course of action.

I plan to license my intellectual property. What royalty rate should I set?

The royalty rate for a license depends on many factors. It establishes a balance between the costs and risks assumed by the licensee and the development costs and potential market value of the technology being transferred from the licensor. Obviously, each situation is necessarily different and the factors that make up a deal need to be identified and assessed by a licensing professional. Vertex can provide such guidance, should you require it.

How do I identify potential licensees for my intellectual property?

Potential licensees for a given technology must meet certain criteria in order that there be a good fit for the product, and between the licensee and licensor. Because of the nature of this type of business relationship, a suitable match between the parties to the license agreement is important. A list of license candidates can be developed via a market study or perhaps by developing a map of the patent landscape for the technology area. There are a number of ways of identifying prospects and Vertex can help you develop a short list of pre-qualified companies.

How do I structure a licensing deal?

Structuring a license deal requires input from a number of different specialists. Vertex can provide the licensing expertise that is needed to oversee the process and bring together the various professionals need to structure and conclude a licensing deal.

I have a new technology that I would like to commercialize. Will the market support it?

One way of getting an assessment of the market support for a new product is to do a market study. Vertex can bring experienced market research resources to bear to provide you the level of information that you need.


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