Corporate Counsel Solutions: Intellectual Property Management Strategies and Tactics

Name: Corporate Counsel Solutions: Intellectual Property Management
Brand: LexisNexis Matthew Bender
SKU: 9781422498576
Price: 1952.20 HKD
Availability: OutOfStock
Author: Faisal Shah; Cathy E. Shore-Sirotin; Andrew F. Young
ISBN: 9781422498576

Edited by Faisal Shah · Cathy E. Shore-Sirotin · Andrew F. Young

LexisNexis Matthew Bender December 2008

Specifications

ISBN-13: 9781422498576
Publisher: LexisNexis Matthew Bender
Publication: December 2008
Format: Paperback
Jurisdiction: U.S. ? Countri(es) for reference only

Details

This one volume publication is a practical resource for corporate counsel, who need timely, easy-to-find and practical information on matters pertaining to a company’s intellectual property assets. Issues including cybersquatting, IP licensing, patents and copyright and trade secret protection are covered with explanations of the practical effects of owning and enforcing the various forms of intellectual property. This Corporate Counsel Solutions volume provides practice insights including warnings, practice tips, additional resources and checklists and forms that will save corporate counsel research and drafting time.

CHAPTER 1 PATENTS

1.01 Patent Rights And Enforcement
1.02 Basic Requirements For Patentability
1.03 Considerations Involving Securing And Maintaining Patent Protection
1.04 Obtaining Patent Protection
1.05 Enforcing And Avoiding Patent Rights
1.06 Contract Alternatives And Adjuncts To Litigation

CHAPTER 2 TRADE SECRET RIGHTS AND ENFORCEMENT

2.01 What is a Trade Secret?
2.02 The Basics Of Acquiring And Maintaining A Trade Secret
2.03 Governing Laws And Adoption Of The Uniform Trade Secrets Act
2.04 Who Owns A Trade Secret?
2.05 How To Protect And Lose A Trade Secret
2.06 Where A Trade Secret Ends
2.07 The Business Incentives To Manage Trade Secrets—A Competitive Advantage from Corporate Governance
2.08 International Trade Secret Protection
2.09 Enforcing a Trade Secret

CHAPTER 3 TRADEMARK RIGHTS AND ENFORCEMENT

3.01 Trademark Basics
3.02 What is a “Good” Trademark—Distinctiveness
3.03 How to Select a Trademark?
3.04 Obtaining And Developing Trademark Rights
3.05 Federal Trademark Registration
3.06 International Trademark Rights and Registration
3.07 Acquisition of Trademark Rights from Another
3.08 Licensing of Trademark Rights
3.09 Protecting And Enforcing Trademark Rights —Policing Trademark Rights
3.10 They Didn’t Stop - What Do I Do Next?
3.11 Trademark Litigation— Nuts & Bolts
3.12 Other Related Causes of Action in Litigation
3.13 Conflicts: Inter-Partes Proceedings in the U.S. Patent and Trademark Office
3.14 Avoiding Abandonment Of Trademark Rights
3.15 Trademark Audit
3.16 Policing of Improper Usage By Another
3.17 Proper Licensing, Assignment of Trademarks, and Security Interests
3.18 Additional Steps To Enhance Trademark Protection
3.19 Use Of Another’s Trademark

CHAPTER 4 COPYRIGHTS

4.01 Introduction
4.02 What Can I Copyright And Why: The Subject Matter Of Copyright
4.03 Acquisition and Ownership Of Copyright
4.04. Making It All Official: Registration Of Copyright
4.05 Duration Of Copyright
4.06 The Nuts And Bolts: Exclusive Rights And Protection
4.07 Copyrights In The Digital Age: Special Problems Related To Copyrights And Technology
4.08. Copyrights In The Digital Age: An In-Depth Analysis Of The Safe Harbors Applicable To Internet Service Providers
4.09 Introduction To Copyright Licenses

CHAPTER 5 “MASK WORKS” A SPECIAL FORM OF PROTECTION IN THE SEMICONDUCTOR AND ELECTRONICS FIELDS

5.01 The Basics of a Mask Work
5.02 Enforcement of Mask Owner’s Rights - Infringement

About the Author

Shah, Faisal

Faisal Shah is a former partner in the Los Angeles office of the global law firm of Pillsbury Madison & Sutro LLP (now known as Pillsbury Winthrop Shaw Pittman LLP) where he advised clients on commercial and business restructuring matters and disputes including obtaining security interests in intellectual property assets. Subsequent to that, he was Executive Vice President and General Counsel of Richardson Labs Inc. where he established programs for the identification, management and protection of the company's intellectual property assets in all of its forms, including patents, trade secrets, trademarks and copyright. At Richardson Labs Inc, Mr. Shah handled a wide variety of corporate transactions and intellectual property licensing and litigation matters, including the eventual acquisition of the company by Rexall Sundown, Inc, a publicly-traded company. In addition, Mr. Shah counseled the company with respect to advertising and marketing claims under DSHEA and the FDA, as well as Internet law issues.

Subsequent to Richardson Labs, Mr. Shah founded MarkMonitor Inc, an international intellectual property brand protection company. As the founder and initial CEO, Mr. Shah initially managed the company's intellectual property asset portfolio and supervised the company¿s branding, advertising and marketing strategies. In addition, Mr. Shah has worked extensively in the domain name industry and has assisted numerous companies in the protection and management of their domain name portfolios. Mr. Shah is a member of the American Bar Association and the International Trademark Association (INTA) Internet WhoIs subcommittee as well as the ICANN Registrar and Intellectual Property Committees. Mr. Shah is currently the CEO and Chairman of FTF Technologies Inc., a patent document management and storage company that provides comprehensive patent management solutions to companies and law firms worldwide.

Mr. Shah holds a B.S. in Marketing from the University of Colorado and a J.D. from the University of San Francisco School of Law.

Lackenbach Siegel, LLP

LACKENBACH SIEGEL, LLP Scarsdale, New York, www.lackenbach.com; a law firm specializing in all fields of Intellectual Property law since 1923, including patents, trademarks, copyrights, trade secrets, advertising, internet and computerlaw. Prepared by: Cathy E. Shore-Sirotin and Andrew F. Young with contributions from Howard N. Aronson and Jeffrey M. Rollings.

Cathy E. Shore-Sirotin Trademark and Advertising Departments; Member: New York, New Jersey, California, Washington, D.C., SDNY, EDNY, WDNY, CD Cal., DNJ, CAFC & U.S. Supreme Court; Fordham Univ. School of Law (J.D.); New York Univ., Stern School of Business (M.B.A.); Univ. of Pennsylvania, The Wharton School and College of Arts and Sciences (B.S. and B.A.); Author: "Antitrust and Professional Sports Eligibility Rules" (Fordham IPLJ 1990); Editorial Board, The Trademark Reporter (INTA 1996-2003, 2006 ); Editor-in- Chief, Trademark Bulletin (NYSBA 2000); Profiled in Beyond L.A. Law: Stories of People Who've Done Fascinating Things with a Law Degree (Harcourt Brace 1998); Former Assoc. Gen. Counsel, News America Inc. (News Corp.) and Asst. Gen. Counsel, Elizabeth Arden Inc.; Law Clerk, Hon. A. Andrew Hauk (C.D. Cal. 1990-91).

Andrew F. Young Patent Department; Member: State Bars: New York and New Jersey; Federal Court Bars: SDNY, EDNY, DNJ, Court of Appeals for the Federal Circuit (C.A.F.C.) and United States Supreme Court; Alfred University College of Ceramics (B.S.C.E), Sheffield University, U.K.(additional studies); Widener Univ. School of Law (J.D.); Registered to practice before the U.S. Patent and Trademark Office (U.S.P.T.O.) and Canadian Intellectual Property Office (C.I.P.O.); Member American Intellectual Property Law Association (A.I.P.L.A) and American Bar Association (A.B.A.); Former Engineer, Allied Signal, Inc.

A grateful acknowledgment to Gene J. Sirotin, C.P.A., M.B.A., GJS Consulting Company, Ardsley, New York, [email protected], for assistance in connection with Financial Aspects of Intellectual Property.

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