Case Study 1

Development and Implementation of Corporate Intellectual Property Management Programs

IP management helps assess new business opportunities and strengthens customer relationships

The Situation
Acme Inc, a tooling manufacturer that was formed in the early 1970s with two owners and two employees had now grown to a business with nearly 100 employees and a strong international customer base. Acme utilized trade secret designs and processes to develop and manufacture high performance proprietary tooling for its customers. They had not relied on patenting but kept all inventions as trade secrets, which in many cases were not clearly defined.

Two circumstances prompted the re-examination of Acme's business procedures. First, the potential to grow the business through a joint venture or licensing arrangement was identified. The owners recognized that they needed to be able to accurately articulate what know-how and technologies that Acme had to offer. Secondly, there was increasing pressure from customers for reassurance that their confidential information was secure.

The Challenge
Acme was faced with the challenge of identifying, cataloguing and valuing its intellectual property. This was recognized as essential to enable Acme to negotiate an appropriate share of joint venture earnings or to establish licensing agreement royalty rates in the future. In addition, Acme had to ensure that both current and past employees were not knowingly or unknowingly revealing proprietary information.

The Solution
Vertex developed and put in place mechanisms and guidelines to ensure that Acme's confidential technologies and business information were identified, protected and secured. Also, a confidential information protection policy and guideline, which dealt with both Acme and their client's confidential information was developed and explained to every employee.

The Result
Acme Inc. was able to properly assess joint venture opportunities. In addition, Acme's relationships with its customers were strengthened due to the increased confidence engendered by Acme's well developed IP management and control procedures.

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Toronto, Ontario
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