Effective legal representation of innovators and inventors requires careful thought and consideration. Among other things, care must be taken to properly initiate communications, prepare assignments, and handle subsequent legal disputes. This webinar discusses common legal issues that often arise during the representation of innovators and inventors. It also includes valuable advice from both innovators/inventors and the IP attorneys who represent them.
Part of the webinar series: INTELLECTUAL PROPERTY 201 - 2022
See more at https://www.financialpoise.com/webinars/
2. 2
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.
3
5. Meet the Faculty
MODERATOR:
Dina Blikshteyn - Haynes and Boone, LLP
PANELISTS:
Mark Bloom - Business & Intellectual Property Rights Consultant
Ada Nielsen - The Peregrine Maven Group
Sanjay Prasad - Appleton Luff
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6. About This Webinar
Legal Issues for Innovators & Inventors
Effective legal representation of innovators and inventors requires careful thought and
consideration. Among other things, care must be taken to properly initiate communications,
prepare assignments, and handle subsequent legal disputes. This webinar discusses
common legal issues that often arise during the representation of innovators and inventors. It
also includes valuable advice from both innovators/inventors and the IP attorneys who
represent them.
6
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: 7/26/22
#2: Buying & Selling IP
Premiere date: 8/30/22
#3: Legal Issues for Innovators & Inventors
Premiere date: 9/20/22
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10. Protecting Intellectual Property
• Patents grant property rights on inventions, allowing the patent owner to exclude others
from making, selling, or using the invention.
• Copyrights protect original works of authorship, including literature, music, artistic works,
and computer software.
• Trademarks identify the source of a good or service used in commerce.
• Trade Secrets are formulas, processes, devices, or other business information that
companies keep secret and out of the public domain.
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11. Protecting Patents
• A patent grants inventors the right to exclude others from making, using, selling (or
offering to sell) or importing their inventions throughout the United States for a limited
period of time. To obtain a patent, the inventor submits his or her application to the U.S.
Patent and Trademark Office (known as the "USPTO"). There are three categories of
patents:
✓ Utility patents
✓ Design patents
✓ Plant patents
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12. Protecting Patents
• Utility patents are most commonly granted for the protection of new, useful, non-obvious
and adequately specified processes, machines, compositions of matter, and articles of
manufacture (or any new and useful genuine improvements thereof), for a period of 17
years from the date the patent is actually issued by the USPTO.
• Design patents are issued for new, original, ornamental and non-obvious designs for
articles of manufacture, for a period of 14 years from the date of issuance.
• Plant patents (used less frequently) are for certain new varieties of plants that have been
asexually reproduced, for a term of 17 years.
12
13. Patent Registration Considerations
• The first step in determining whether to protect a new product or invention with a patent
is to understand the costs and benefits of patent protection. The patent application and
registration process generally lasts three to five years and often involves a costly legal
and consulting fees. That being so, it is crucial to determine, before you file, whether the
benefits of being able to exclude others from manufacturing, distributing or exploiting the
subject matter outweighs the high costs of prosecuting and protecting the patent.
• How close (from both an infringement and commercial development perspective) is the
subject matter of the invention to existing patented and non-patented technology? For
example, if the subject matter of the patent is too close to existing technologies, then the
claims allowed by the USPTO will be very narrow and difficult to commercialize and
protect.
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14. Patent Registration Considerations
• Can the invention be exploited within the time frame granted by the federal statute? Or,
will the market value of the technology or invention be lost during the three to five years
that it will take to obtain a patent?
• Timing is always an issue. If the patent application concerns a field in which the
technology is developing quickly, you do not want to run the risk of the invention
becoming obsolete by the time the patent is finally issued.
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15. Patent Protection Example
• Spanx
✓ Entrepreneur, and now billionaire, Sara Blakely invented the undergarment and
company, Spanx.
✓ Blakely reportedly worked tirelessly and spent several nights researching
undergarment patents prior to pursuing her company.
✓ Ultimately, with assistance from patent attorneys on writing the applications, Blakley
received three patents on undergarments, securing her company’s control in the
marketplace.
15
16. Trade Secret Protection
• Broadly speaking, any confidential business information which provides an enterprise a
competitive edge may be considered a trade secret. Trade secrets encompass
manufacturing or industrial secrets and commercial secrets. States have trade secret
laws that specifically define “trade secret.”
16
17. Trade Secret Protection
• For example, the Uniform Trade Secret Law (adopted by 48 states) defines “trade secret”
as:
(4) "Trade secret" means information, including a formula, pattern, compilation, program,
device, method, technique, or process, that:
(i) derives independent economic value, actual or potential, from not being generally
known to, and not being readily ascertainable by proper means by, other persons who can
obtain economic value from its disclosure or use, and
(ii) is the subject of efforts that are reasonable under the circumstances to maintain
its secrecy
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18. Trade Secret Requirements & Limitations
• To receive trade secret protection, information must be:
✓ An actual secret;
✓ Protected by reasonable efforts; and
✓ Valuable as a secret.
• Limitations on trade secret protection include:
✓ Independent discovery; and
✓ Reverse engineering.
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19. Trade Secret Protection
• Additionally, the federal government recently passed the Defend Trade Secrets Act of
2016 that defines a “trade secret” as:
✓ “[T]he term ‘trade secret’ means all forms and types of financial, business, scientific,
technical, economic, or engineering information, including patterns, plans,
compilations, program devices, formulas, designs, prototypes, methods, techniques,
processes, procedures, programs, or codes, whether tangible or intangible, and
whether or how stored, compiled, or memorialized physically, electronically,
graphically, photographically, or in writing.” 18 U.S.C. § 1839(3).
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20. Protecting Trade Secrets
• At minimum, companies should take three steps to actively protect their trade secrets
from misappropriation:
✓ regularly identify and label trade secrets and other confidential information;
✓ communicate and engage with employees through confidentiality and other
employment agreements; and
✓ exercise diligence to withhold trade secrets when meeting with outsiders and require
nondisclosure agreements when revealing any confidential IP.
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21. Trade Secret Case Illustration
• PepsiCo, Inc., v. Redmond, 54 F.3d 1262 (7th Cir. 1995)
✓ The case involved beverage industry competitors Quaker (Gatorade) and rival PepsiCo.
✓ William Redmond, Jr., worked as a high-level manager for Pepsi and signed a
confidentiality agreement with Pepsi as an employee.
✓ A former Pepsi employee, working for Quaker, solicited Redmond to work for Quaker.
✓ After Redmond left Pepsi for Quaker, Pepsi filed a lawsuit seeking a temporary
restraining order to prevent Redmond from disclosing trade secrets. Pepsi argued
Redmond would inevitably disclose Pepsi’s trade secret financial and business plans.
✓ The 7th Circuit affirmed the district court’s restraining order, finding Redmond would
inevitably rely on the trade secrets at his job and thus must be enjoined from working for
Quaker.
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22. Copyright Registration
• Copyright is a form of protection provided by the laws of the United States (title 17, U.S.
Code) to the authors of “original works of authorship,” including literary, dramatic,
musical, artistic, and certain other intellectual works. This protection is available to both
published and unpublished 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.
22
23. Copyright Registration
• Section 106 of the US Copyright Act generally gives the owner of copyright the exclusive
right to do and to authorize others to do the following:
✓ reproduce the work in copies or phonorecords
✓ prepare derivative works based upon the work
✓ distribute copies or phonorecords of the work to the public by sale or other transfer
of ownership, or by rental, lease, or lending
✓ perform the work publicly, in the case of literary, musical, dramatic, and
choreographic works, pantomimes, and motion pictures and other audiovisual works
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24. Copyright Registration
✓ display the work publicly, in the case of literary, musical, dramatic, and
choreographic works, pantomimes, and pictorial, graphic, or sculptural works,
including the individual images of a motion picture or other audiovisual work
✓ perform the work publicly (in the case of sound recordings*) by means of a digital
audio transmission
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25. Advantages to Copyright Registration
• Copyright is secured automatically when the work is created, and a work is “created”
when it is fixed in a copy or phonorecord for the first time. However, registration is not a
condition of copyright protection.
• Even though registration is not a requirement for protection, the copyright law provides
several inducements or advantages to encourage copyright owners to make registration.
Among these advantages are the following:
✓ Registration establishes a public record of the copyright claim
o Which provides potential infringers additional notice and give licensees a point
of contact
✓ Before an infringement suit may be filed in court, registration is necessary for works
of U.S. origin.
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26. Advantages to Copyright Registration
✓ If made before or within five years of publication, registration will establish prima
facie evidence in court of the validity of the copyright and of the facts stated in the
certificate.
✓ If registration is made within three months after publication of the work or prior to an
infringement of the work, statutory damages and attorney’s fees will be available to
the copyright owner in court actions. Otherwise, only an award of actual damages
and profits is available to the copyright owner.
✓ Registration allows the owner of the copyright to record the registration with the U.S.
Customs Service for protection against the importation of infringing copies. For
additional information, go to the U.S. Customs and Border Protection website at
www.cbp.gov/.
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27. Trademark Registration
• Although unregistered trademarks receive some protection under the common law and
under the Lanham Act, 15 U.S.C. §§ 1051 et seq., trademarks can be further protected
through registration under both state and federal laws. Federal trademark registration
provides significant additional substantive and procedural rights.
• An applicant obtains a federal registration by filing an application with the United States
Patent and Trademark Office (USPTO). Federal registration can be on one of two
registers—the Principal Register and the Supplemental Register.
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28. Trademark Registration
The Supplemental Register is for registration of potential marks that are capable of
distinguishing the applicant’s goods or services but are not inherently distinctive and have not
yet acquired a “secondary meaning” in the mind of the public as an identifier of the specific
provider of goods or services. Consequently, until a merely descriptive mark “acquires
distinctiveness,” it can only be registered on the Supplemental Register.
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29. Trademark Registration
• Registration on the Principal Register provides additional benefits, including:
(i) a statutory presumption that
(a) the mark is valid,
(b) the registrant is the owner of the mark, and
(c) the registrant has the exclusive right to use the registered mark; (ii) the
registration is proof that the mark has acquired secondary meaning
(ii) the registration serves as constructive notice of a claim of ownership, eliminating any
justification or defense of good faith adoption and use made by a third party after the
registration date;
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30. Trademark Registration
(iii) the registrant is entitled to nationwide priority based on the filing date; and
(iv) the registration becomes incontestable after five years on the Principal Register,
creating conclusive evidence of the registrant’s exclusive right to use the mark,
subject to certain statutory defenses.
30
31. Trademark Registration Benefits
• Registration on either Principal or Supplemental register provides a number of benefits,
including:
✓ it grants the right to use the registered trademark symbol: ®,
✓ it grants the right to file a trademark infringement lawsuit in federal court and to
obtain monetary remedies, including infringer’s profits, damages, costs, and, in some
cases, treble damages and attorneys’ fees,
✓ it acts as a bar to the registration of another confusingly similar mark, and
✓ it may serve as the basis for an international trademark application.
✓ After a mark is registered, the owner must protect the mark by properly using the
mark and by monitoring use of the same or confusingly similar marks by others. To
maintain the federal registration, the owner must periodically pay maintenances fees
and file declarations of continued use and renewal applications.
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32. Using Contracts to Protect IP
• A non-disclosure agreement (NDA), sometimes called a confidentiality agreement,
allows a company to share its IP with others, whose input it needs, without unduly
jeopardizing that information.
• Assignment agreements are agreements that fully and specifically provide that the
employer owns IP created by an employee in the course of the employee's work duties.
Often, the assignment provision is contained in the general employment agreement the
employee signs before he begins his employment. In most cases, if an assignment
agreement properly setting forth the employer's ownership rights in the employee's
invention rights has been signed by the employee, the assignment agreement will control
the parties' rights and the agreement will be enforceable in federal and state court.
32
33. Hiring an Attorney – Questions to Ask
• What is your education, work experience and area of specialty?
• If your matter is litigation - after explaining my case fully to you, how can you help me and
what are the risks of successfully or unsuccessfully resolving my legal problem? (I
understand there are no guarantees and you cannot make specific promises about any
outcome.)
• Is the solution I have in mind regarding my legal problem really necessary or are there
other alternatives (such as mediation or collaborative law)
• How many similar matters have you handled?
• What were the results of those cases?
33
34. Hiring an Attorney – Questions to Ask
• Which lawyer in the firm will be working on your case?
• Will there be any limitations on the scope of the representation?
• How will you be kept informed about the progress of the case?
• How will I be charged for your services? Are there alternative fee arrangements
available?
34
35. Hiring an Attorney – Danger of DIY Solutions
• Copyrights
✓ Similar to Patents and Trademarks, an attorney is not necessary to file a
copyright application. However, due to the complex nature of dealing with the United
States Patent and Trademark Office (USPTO) or the Copyright Office, often times,
attorneys are retained to ensure the applications are registered properly.
✓ Registration of the work with the Copyright Office is still necessary if you intend
to bring a lawsuit in Federal Court to enforce the copyright. In addition, registration
provides the copyright owner procedural advantages should an infringement lawsuit
ever be filed, including the ability to obtain statutory damages and attorney's fees.
35
36. Licensing Intellectual Property
• A licensing agreement is a partnership between an intellectual property rights owner
(licensor) and another who is authorized to use such rights (licensee) in exchange for an
agreed payment (fee or royalty).
• A typical license agreement will specify the rights granted, the term of the grant, the
consideration in exchange for the grant, records and reporting, representations and
warranties regarding the intellectual property, how infringement issues will be handled,
tort liability for products or services covered by the license, and other factors.
36
37. Types of Licenses
• Express Licenses
✓ License where the parties come to a meeting of the minds regarding the specific terms
of the license. Usually a written agreement.
37
38. Types of Licenses
• Implied License
✓ An implied copyright license is a license created by law in the absence of an actual
agreement between the parties. Implied licenses arise when the conduct of the parties
indicates that some license is to be extended between the copyright owner and the
licensee, but the parties themselves did not bother to create a license.
✓ This differs from an express license in that the parties never actually agree on the
specific terms of the license. The purpose of an implied license is to allow the licensee
(the party who licenses the work from the copyright owner) some right to use the
copyrighted work, but only to the extent that the copyright owner would have allowed
had the parties negotiated an agreement. Generally, the custom and practice of the
community are used to determine the scope of the implied license.
38
39. Types of Licenses
• Exclusive Licenses
✓ License limited to a specific scope or field, such as context, market, territory, or time.
'Exclusive' does not mean 'one and only' license granted, but only that the licensor
agrees not to grant other licenses that have the same rights within the scope or field
covered by the exclusive license. It may refer to a geographical area, technological
application, method of production, or production of a specific product. Exclusivity may
or may not include competition from other licensees or the licensor itself, granting of
sublicenses, performance requirements to be met by the licensee, and/or a time
limitation.
39
40. Types of Licenses
• Non-Exclusive Licenses
✓ A non-exclusive license, you give the licensee permission to exercise the right in
question, but you also reserve the right to continue exercising it yourself and to
authorize others to do so. The recipient of a non-exclusive license may exercise the
right or rights licensed, but MAY NOT: authorize others to exercise the right or rights
licensed via transfer or license without permission of the copyright owner; and sue for
copyright infringement of the licensed right(s).
40
41. Types of Licenses
• Cross Licenses
✓ When used in the context of patents, a cross-licensing agreement is an agreement
pursuant to which two or more license holders exchange licenses so that each party
may benefit from the other’s patent. Generally, the patents that each party owns cover
different essential aspects of a given commercial product. Therefore, by cross
licensing, each party maintains their freedom to bring the commercial product to
market. Pursuant to cross licensing, neither party pays monetary royalties to the other
party.
41
42. Intellectual Property Litigation
• Litigation, while necessary in some cases, can be a costly endeavor – both as a Plaintiff
or a Defendant.
• There are several informal and formal alternatives or pre-cursors to litigation.
42
43. Intellectual Property Litigation
• Arbitration:
✓ Arbitration is an adjudicative process that, like a trial, has a third party decide the
dispute. Thus, arbitration is a form of private judging. Because arbitration is a
creature of contract, it has a major advantage over litigation: the parties can select a
decision maker with expertise in the type of intellectual property dispute involved.
Arbitration also has other advantages over litigation. It is potentially less costly and
faster because:
o it is less formal than litigation
o it allows for less discovery
o judicial rules of evidence typically do not apply
o the arbitrator’s award is final, binding and enforceable in court
o there are limited appeal rights.
43
44. Intellectual Property Litigation
• Mediation:
✓ Unlike arbitration, mediation is not an adjudicative process; it is facilitative in nature.
Mediation involves the parties in a dialogue concerning the disputed issues. Establishing
who is right and who is wrong on the issues is not the focus of mediation: The goal is to
seek business solutions acceptable to both sides through negotiation, compromise and
creative problem solving.
✓ Litigation is necessary in some circumstances. The vast majority of intellectual property
litigation, especially cases involving copyright, patent and trademark infringement claims
takes place in the federal courts as they are statutory based disputes. Until recently, most
trade secret litigation (not involving other claims) was governed by state law. The Defend
Trade Secret Act of 2016, as passed by the United States, created yet another federal
claim for potential litigants to gain entrance to federal courts.
44
45. Acquiring Intellectual Property
• A business may acquire IP for the following reasons:
✓ Strengthen negotiation positions
✓ Risk mitigation
✓ Investment opportunities
45
46. Acquiring Intellectual Property
• Due Diligence is necessary. Given the importance of intellectual property assets to a
business, and the willingness of owners to litigate in order to protect them, it is important
that you ensure:
✓ that you have "freedom to operate" in respect of your present and future business
activities. This is to prevent wasting resources on an enterprise that you may later be
forced to stop as a result of infringing third party intellectual property and in some
cases in respect of which you could later have to pay significant damages; and
✓ that a third party from which you are acquiring intellectual property rights has full
entitlement to them.
46
47. Special Considerations
• Joint Ownerships:
✓ Patent Law: When there are joint inventors of a single invention, in the absence of an
agreement to the contrary, each inventor is presumed to be a joint owner in the patent,
having an “undivided equal partial interest in the invention as a whole.”
✓ Similarly, when companies collaboratively pursue research and development without
delineating ownership, each company is presumptively a co-owner of the patent if: (i) at
least one employee from the company is a co-inventor, and (ii) the employee previously
assigned in writing to the company his future rights to inventions
47
48. Special Considerations
• Copyright Law: Two or more individuals can share an equal undivided interest in a
copyrighted work without an explicit agreement provided they satisfy the conditions of
joint authorship. A joint work exists when:
✓ two or more individuals must have intended their contributions to be merged
✓ into “inseparable or independent parts of a unitary whole” at the time of creation.
48
49. Special Considerations
• Assignment Clauses
✓ invention assignment clauses assign the inventor’s right title and interest in the
invention to another party. In the employment relationship, the clause will assign and
transfer all rights to the employer. However, these clauses need to be crafted carefully to
evidence the parties’ intent.
✓ Stanford University v. Roche Molecular Systems, Inc., 563 U.S. 776 (2011): The
language of the assignment clause Stanford University had employees sign “Copyright
and Patent Agreements” that contained the words “I agree to assign” which the Supreme
Court interpreted as mere promise to assign rights in the future which requires a
subsequent assignment must be precise.
49
50. Special Considerations
• Work For Hire
✓ A work is not “made for hire” simply because one person pays another to create the
work or because an agreement between the parties labels it a “work made for hire.”
✓ Under the Copyright Act (17 U.S.C. §§ 101 et seq.), a work is a “work made for hire”
only if:
(1) it is prepared by an employee within the scope of his employment; or
(2) it is specially ordered or commissioned from an independent contractor pursuant
to a written agreement and the work falls within one of nine statutorily defined
categories.
50
52. 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.
52
53. About The Faculty
Mark Bloom - mbloom92@gmail.com
Mark is an internationally-recognized Registered Patent Attorney, intellectual property (IP)
strategist, and general business professional specializing in facilitating the strategic use of IP
assets in business activities. He is currently a member of the Bars of Massachusetts, New
York, and Wisconsin, and various Courts of Appeal, including the U.S. Supreme Court. Mark
is registered to practice before the USPTO and is designated as a Certified Licensing
Professional (CLP ), as well as a Registered Technology Transfer Professional (RTTP ). He
has garnered and maintains the highest rating of “AV Preeminent” by the Martindale-Hubbell
Attorney Peer Review Rating System®. To date, Mark has given 129 public presentations and
has 34 publications, including four book chapters. Mark was previously the Editor of AUTM’s
Technology Transfer Practice Manual. Currently, Mark serves as one of two USA
representatives on the Editorial Board of The Patent Lawyer Magazine.
53
54. 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.
54
55. 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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56. 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.
56
59. About Financial Poise
59
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