IP rights are an important class of intangible assets that can be assigned or licensed to generate revenue. Indeed, some companies do not make or sell products; their entire revenue is derived from the licensing of their patents. Suffice it to say, licensing revenue has become a significant source of value in the global intellectual property economy. This webinar will help you better understand the complex legal issues associated with IP transactions. To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/buying-selling-ip-2021/

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Practical and entertaining education for
attorneys, accountants, business owners and
executives, and investors.

3. Disclaimer
The material in this webinar is for informational purposes only. It should not be considered
legal, financial or other professional advice. You should consult with an attorney or other
appropriate professional to determine what may be best for your individual needs. While
Financial Poise™ takes reasonable steps to ensure that information it publishes is accurate,
Financial Poise™ makes no guaranty in this regard.
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5. Meet the Faculty
MODERATOR:
Eugene Goryunov - Haynes & Boone, LLP
PANELISTS:
Darren Spielman - The Concept Law Group, P.A.
Sanjay Prasad - Appleton Luff
Dina Blikshteyn - Haynes and Boone, LLP
Ada Nielsen - The Peregrine Maven Group
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6. About This Webinar
Buying & Selling IP
IP rights are an important class of intangible assets that can be assigned or licensed to
generate revenue. Indeed, some companies do not make or sell products; their entire
revenue is derived from the licensing of their patents. Suffice it to say, licensing revenue has
become a significant source of value in the global intellectual property economy. This webinar
will help you better understand the complex legal issues associated with IP transactions.
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7. About This Series
Intellectual Property 201
In today's economic environment, intellectual property (IP) rights have become increasingly important
assets for both individual and corporate entities. More and more, both are recognizing the economic
importance of IP rights--whether those rights consist of a single patent--or whether they consist of an
entire portfolio also including trademarks, copyrights, and trade secrets.
This information-packed webinar series focuses on the intricacies of IP rights as they relate to the specific
areas of brand protection, IP transactions, internet marketing, and other IP issues that are critical when
representing innovators and inventors. Join some of the leading attorneys in the World, as they
discuss—in plain English for the non-expert—some specific IP challenges that individuals, businesses,
and those who represent them are likely to face.
Each Financial Poise Webinar is delivered in Plain English, understandable to investors, business owners, and
executives without much background in these areas, yet is of primary value to attorneys, accountants, and other
seasoned professionals. Each episode brings you into engaging, sometimes humorous, conversations designed to
entertain as it teaches. Each episode in the series is designed to be viewed independently of the other episodes so that
participants will enhance their knowledge of this area whether they attend one, some, or all episodes.
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8. Episodes in this Series
#1: Choosing, Building, & Protecting Your Brand
Premiere date: 5/20/21
#2: Buying & Selling IP
Premiere date: 6/17/21
#3: Legal Issues for Innovators & Inventors
Premiere date: 7/15/21
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9. Episode #2
Buying & Selling IP
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10. Intellectual Property Transactions
• Historically speaking, the market for buying and selling IP has experienced significant
growth. Today, businesses treat IP like any other fixed asset.
• A business may acquire IP for the following reasons:
 Strengthen negotiation positions
 Risk mitigation
 Investment opportunities
 Increase market presence
• A business may divest its IP for the following reasons:
 Monetize latent IP
 Monetize excess IP
 Quickly raise capital
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11. How to Buy and Sell Intellectual Property
• IP Brokerage
 IP brokerage firms work with clients interested in acquiring IP as well as clients
looking to divest IP.
 On the sell-side, brokerage firms will often perform due diligence of the assets
to determine an initial sales price.
• Auctions
 Similar to any other auction, interested parties may bid on IP assets, with the
highest bidder acquiring the assets.
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12. Challenges in IP Technology
• Intellectual property can quickly depreciate or disappear.
• This risk of depreciation/loss exists for a number of reasons, including:
 changes in technology;
 changes in law;
 unfamiliarity of the acquiring party with the acquired assets; and
 loss of inventive talent and knowledge either before or after the transaction.
 Bare patents in a new area can be challenging to sell.
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13. Patents
• PATENTS protect inventions and discovery, including new and useful processes,
machines, products, compositions, or manufactures.
• A patent is a right granted by the U.S. government to an inventor for a limited time to
exclude others from:
 Making, using, offering to sell, or selling the patented invention; or
 Importing the patented invention into the United States.
• Types of patents include design, utility, and plant patents. Generally, a patent lasts twenty
(20) years from the date of filing.
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14. Acquiring Patents
 When acquiring patents, the following issues should be considered:
• Ownership
 Confirm that the seller does in fact own the patent.
 Verify that all required maintenance fees have been paid.
 Identify the countries the patent rights exist.
• Pending Applications
 Determine whether the patent has any continuations or continuations-in-part that
are pending before the Patent Office.
 ―Open chains‖ are often more valuable because the buyer may prosecute new
applications based on the acquired patent.
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15. Acquiring Patents
• Validity and Enforceability
 Determine whether any actions have been filed on behalf of or against the seller
for infringement.
 Perform an independent validity and prior art search.
• Licenses and Assignments
 Verify that any prior assignments have been properly recorded.
 Determine the scope of use for any existing licenses.
 Determine the value imputed to the IP by the licenses.
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16. Patent Valuation
 When accessing the monetary value of a patent, one must consider the following factors:
• Technology Area
 The earlier in the commercialization stage the technology, the lower the value of
the patent…unless it is a ―foundation‖ patent.
• Priority Date
 An early priority date means less prior art can be brought against the patent.
• Strength and Breadth of the Claims
 A majority of the due diligence should be spent analyzing the patent itself.
 The claims of a patent determine the scope of coverage, and thus, stronger
claims provide wider coverage.
 Important to analyze the claims in light of the specification.
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17. Patent Valuation
• Market Need and Size of the Relevant Technology Market
 Valuable patents relate to a large technology market and solve an wide spread
problem within that market.
• Other Factors
 Years remaining on the term of the patent.
 Size of the portfolio.
 Whether or not the patent family is an ―open chain.‖
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18. Changes in Patent Law
• The 2014 Supreme Court decision in Alice Corp. v. CLS Bank had a dramatic effect on
the validity of software and business-method patents.
• The problem is that the so-called judicial exceptions to patent eligibility are not
adequately defined and lead to unpredictability.
• The American Intellectual Property Law Association (AIPLA) has become the latest IP
group (after IPO) to release proposed legislation to clarify the standard and complaining
that the resulting uncertainty has weakened the patent system.
• The AIPLA proposes that an invention be ineligible ―only if the claimed invention as a
whole exists in nature independent of and prior to any human activity, or can be
performed solely in the human mind."
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19. America Invents Act
• Growing concern regarding "excessive invalidations" by the Patent Trial and Appeal
Board. Possible solutions to consider:
 Evidentiary standard should be clear and convincing evidence (not merely a
"preponderance of the evidence.‖)
 claim terms their plain and ordinary meaning, rather than the "broadest
reasonable interpretation―
 Different panels of judges for institution and trial
 Grant amendments more liberally
 Stricter provisions on standing and estoppel
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20. Trademarks
• A TRADEMARK identifies the source of a good (or service) used in commerce.
 Names, brands, words, or phrases (e.g., APPLE®, Apple’s iPod, or McDonald’s
slogan ―I’m Lovin’ It‖)
 Symbols or shapes (e.g., Nike’s Swoosh or GEICO’s Gecko)
 Trade-dress or product, package, or store design (e.g., 7-Eleven store design)
 Sounds, scents, or textures (e.g., NBC chimes)
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21. Trademark Due Diligence
 When acquiring trademarks and/or service marks, the following issues should be
considered:
• Ownership
 Confirm that the seller does in fact own the mark.
 Identify any licenses, assignments, security interests, or any other burden
attached to the mark.
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22. Trademark Due Diligence
• Registration
 Determine whether the marks have been registered federally and/or in one or
more states.
 If the mark(s) have been registered, confirm that the registration(s) have been
properly maintained.
• Use of the Mark
 Verify that the mark(s) are still in use… and have been used properly.
 Non-use for certain time period may constitute abandonment, and
consequently, loss of the mark.
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23. Trademark Due Diligence
• License and Assignments
 Perform detailed due diligence on all licenses and assignments.
 Licenses may significantly affect the nature, scope, and/or duration of the
buyer’s activities.
 Ensure that the seller has not engaged in ―naked licensing,‖ which may lead to
the mark(s) being declared abandoned and unenforceable.
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24. Copyrights
• A COPYRIGHT protects:
 original works of authorship
 fixed in a tangible medium.
• For example, copyright protects literary, musical, and dramatic works.
• A copyright protects the expression of ideas, not the underlying ideas of the work. For
example, an idea of a song is not protectable, but the written sheet music is protectable.
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25. “Bundle of Sticks”
• A copyright gives its owner the exclusive right to:
 Reproduce the work – others cannot reproduce the work without permission.
 Prepare derivative works – others cannot create adaptations without permission.
 Distribute copies of the work – others cannot distribute copies without permission.
 Perform works – others cannot publicly perform certain works.
 Display works – others cannot publicly display certain works.
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26. Copyright Due Diligence
 When acquiring copyrights, the following issues should be considered:
• Ownership
 Confirm that the seller does in fact own the rights in the copyright.
 Determine the original author of the work.
 Verify that the work is not in the public domain
 Determine if the work is a ―derivative work‖ or a ―work made for hire.‖
• Registration
 Determine whether the work has been registered with the U.S. Copyright Office.
 Copyright registration is not scrutinized for validity like trademarks and patents,
thus, it is important to evaluate the validity and strength of the copyright.
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27. Copyright Due Diligence
• License and Assignments
 Carefully exam any prior transfer history to ensure that the transfer history has
been properly documented.
 Ascertain the scope of rights transferred. Licensed rights may be limited to a
specific use.
• Modification History
 Obtain a complete modification history of the work with a listing of all publically
available versions.
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28. Trade Secrets
• A TRADE SECRET is any information, including a formula, pattern, compilation,
program, device, method, or process:
 That derives economic value from not being readily ascertainable; and
 Is subject of efforts that are reasonable under the circumstances to maintain its
confidentiality.
• Examples: KFC’s Fried Chicken Recipe; Coca Cola Formula; customer or vendor lists;
business strategies.
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29. Trade Secret Due Diligence
• To receive trade secret protection, information must be:
1. An actual secret;
2. Protected by reasonable efforts; and
3. Valuable as a secret.
• Limitations on trade secret protection include:
 Independent discovery; and
 Reverse engineering.
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30. Maintaining a Trade Secret
• Limit access by reasonable efforts:
 Restrict access to the information (e.g., encryption or password protection);
 Limit the number of people who know the information;
 Execute non-disclosure and confidentiality agreements with employees, consultants,
and contractors;
 Promulgate employee and business policies regarding confidential and trade secret
information.
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31. More Changes in Technology
• Artificial Intelligence (AI) will increasingly be used to integrate analytics and human
intelligence to automate the routine tasks of IP due diligence.
• Sophisticated custom-built automation systems will gradually replace the use of law firm
associates.
• Sophisticated modeling may assist with predicting changes in law (and technology?)
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32. More Changes in the Law
• Challenge to AIA on constitutionality grounds.
• Anticipate more legislation like the STRONGER Patents Act:
 PTAB proceedings would become more similar to District Court proceedings
 Limits on standing to challenge patents
 Easier to get an injunction in district court, re-establishing a presumption of injunctive
relief when a patent is found valid and infringed.
 Proving inducement would only require that the alleged infringer intended to cause
acts that constitute infringement.
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33. About the Faculty
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34. About The Faculty
Eugene Goryunov - eugene.goryunov@haynesboone.com
Eugene Goryunov is a partner in the Intellectual Property Practice Group in the Chicago office of Haynes
and Boone and an experienced trial lawyer that represents clients in complex patent matters involving
diverse technologies. He has extensive experience and regularly serves as first-chair trial counsel in post-
grant review trials (IPR, CBMR, PGR) on behalf of both Petitioners and Patent Owners at the USPTO. He
has been involved in nearly 200 such trials. Eugene is also deeply involved as trial counsel in all aspects
of cases in Federal courts, at the USITC involving Section 337 investigations, and in appeals at the
Federal Circuit. He has litigated on matters involving wireless/mobile, computers, software,
pharmaceuticals and various products and goods. Eugene has authored a treatise titled the Trial
Lawyer’s Guide to Post Grant Patent Proceedings (published by LexisNexis), which is entering its third
publication/edition year, chapters in books discussing U.S. patent law and litigation (published by
Chambers and Global Legal Group), and is a regular contributor to intellectual property publications,
including the Intellectual Property Magazine, The Patent Lawyer, AIPPI E-News, and the PTAB Bar
Association’s Round-Up. He has published more than 100 articles, many of which discuss aspects of
post-grant review trial practice. Eugene also regularly speaks about diverse issues of patent law and
post-grant review trial practice and has taught patent law at multiple universities.
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35. About The Faculty
Sanjay Prasad - sanjay@prasadip.com
Sanjay has practiced at the forefront of technology and intellectual property for over twenty years. He is
experienced in all business and legal aspects of intellectual property from developing IP strategy for
senior management to execution of the strategy, including patent portfolio development, deal
development and negotiation and monetization. Sanjay has practiced in law firms in Boston and Silicon
Valley, served as chief patent counsel to Oracle Corporation, headed up the India office of IPVALUE
Management and served in several senior roles at Intellectual Ventures.Sanjay has been repeatedly
recognized byIntellectual Asset Management Magazine as one of the world’s leading IP strategists. He
has testified before a U.S. Congressional Subcommittee on patent legislation, is a frequent speaker on
topics pertaining to IP law and has served in leadership capacities on several IP association boards.
Sanjay is admitted to practice in California, Massachusetts, the U.S. Patent and Trademark Office and
various federal courts. Sanjay earned his law degree from Syracuse University College of Law where he
was an editor of the Syracuse Law Review. He also earned a Masters in Computer Engineering and a
Bachelor in Electrical Engineering, both from Boston University.
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36. About The Faculty
Darren Spielman - DSpielman@ConceptLaw.com
Darren Spielman is a Shareholder of Kain Spielman, P.A. He concentrates his practice in the field of intellectual
property, with an emphasis on trademarks, trade secrets, domain name disputes, copyrights, first amendment
law including slander, libel and defamation. Darren has a Bachelor of Science in Public Relations from
University of Florida. He also earned a Masters in Mass Communications degree from the University of Florida,
as part of a joint degree with the University of Florida Levin College of Law. Darren is admitted to practice in
front of the U.S. District Court for the Northern District of Florida, Southern District of Florida, and Middle District
of Florida and the Eleventh Circuit Court of Appeals. Darren is a member of the Intellectual Property Committee,
the Vice Chair of the E-discovery Committee and the Computer Law and Technology Committee of the Business
Law Section of the Florida Bar. He is also a Board Member of the Federal Bar Association Broward Chapter.
Darren is a member of the Intellectual Property Law Association of Florida, the First Amendment Lawyers
Association and the Broward County Bar Association. Awards & Accolades: Darren has been honored as AV
Rated with Martindale Hubble 2015-2018 and with the Super Lawyers Rising Stars Award for 2009-2011, 2013-
2018 and Top Attorneys Florida Outstanding Young Lawyers Award for 2011, 2013-2017; America’s Most
Honored Professionals Top 1%, 2016-2018. Darren is also a frequent presenter and public speaker on
Intellectual Property and First Amendment topics.
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37. About The Faculty
Dina Blikshteyn - dina.blikshteyn@haynesboone.com
Dina Blikshteyn is a counsel in the Intellectual Property Practice Group in the New York office of
Haynes and Boone. Dina’s practice focuses on post grant proceedings before the U.S. Patent and
Trademark Office, preparing and prosecuting domestic and international patent applications, as
well as handling trademark and other IP disciplines. Dina is a co-chair of the artificial intelligence
practice at Haynes and Boone. Dina focuses her patent practice on technology areas. Illustrative
areas include artificial intelligence and machine learning, cloud computing, cyber security, web
applications, map and navigation applications, point-of-sale systems, computer graphics, data
structures, algorithms, distributed systems, client-server applications, CPU/GPU processor design,
operating systems, mobile technologies, databases, database optimization, multimedia and video
streaming, financial trading products, banking software, computerized auction software, healthcare
systems, Internet systems, advertising software, wireless communication systems and
applications, telecommunications systems, marketing applications, industrial control systems (ICS),
cable systems, and smart grid and micro grid technologies.
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38. About The Faculty
Ada Nielsen - ada@peregrinemaven.com
Ms. Ada C. Nielsen is Managing Director of The PeregrineMaven Group. She created The PeregrineMaven
Group to commercialize inventions, & improve profitability for new & established businesses, products &
services. In addition, she is launching a consulting practice around sustaining the business/technical cultures of
creating and protecting trade secrets. She has commercialized dozens of inventions & created new ventures in
chemicals, materials & energy – as well as in other market areas. She has been successful working for major
companies (such as Amoco, BP, Nalco Chemical Company & Chemical Waste Management) in business
development, finance, sales & marketing – measured by commercial success & an improved bottom line. She
leads the implementation of virtual chat rooms for Milwaukee Women (where she is also a member). She
developed a very successful hands-on 2-day course for current&future directors and business executives for the
Private Directors Association in 2019. She served as president of the Licensing Executives Society (USA&
Canada) Inc. in 2010, as Wisconsin Chapter Chair for LES, and as president of the Commercial Development &
Marketing Association. She served on the board of the Association for Corporate Growth Chicago for 7 years
andwas named one of the Top 300 International IP Strategists for 7 years in a row (IAM Magazine). She earned
an A.B. in chemistry from Wellesley College, an M.B.A. in finance & marketing from the University of Chicago
Booth Graduate School of Business, & studied theoretical physical chemistry in graduate programs at Carnegie-
Mellon University, Tulane University & Dartmouth College. She is a Certified Licensing Professional.
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39. Questions or Comments?
If you have any questions about this webinar that you did not get to ask during the live
premiere, or if you are watching this webinar On Demand, please do not hesitate to email us
at info@financialpoise.com with any questions or comments you may have. Please include
the name of the webinar in your email and we will do our best to provide a timely response.
IMPORTANT NOTE: The material in this presentation is for general educational purposes
only. It has been prepared primarily for attorneys and accountants for use in the pursuit of
their continuing legal education and continuing professional education.
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40. About Financial Poise
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