Details
- Written by two prominent, respected lawyers (both partners at Woodcock Washburn, one of the most respected national IP "boutiques") specializing in intellectual property law for major corporations (Coca-Cola, BellSouth, Cingular and AT&T)
- IP practitioners, business executives and law and business students will benefit from the strategies and explanations outlined herein
- A unique, comprehensive treatment of exactly how to strategically manage IP assets--as well as a nuanced examination of the legal and business cultures in which this management occurs
This book focuses on the intersection of law and business as it relates to the strategic management of intellectual property. The Business of Intellectual Property combines the statutory framework of intellectual property, case law, business and legal principles of accounting and valuation, and multiple case studies of successful companies to provide readers with a combination of strategic vision and practical advice that helps them to integrate such processes into their own--or their client's--operations, or to improve existing practices.
Readership: Primary: IP practitioners, general counsel, executive suite members and board members. Secondary: law school and MBA programs on strategic management of intellectual property, accountants, compliance officers, lobbyists, and executives.
Forward
Preface
1: Reports from the Revolution
I. Trade-Undressed - The Zeigenfelder Company (Trade dress)
II. Copy Wrong and Copy Right Napster and Apple (Copyright)
III. A Coke by Any Other Name The Coca-Cola Company (Trademark)
IV. Securing the Borders with Patents Texas Instruments (Patent)
2: The Economics of Intellectual Property
I. Premise
II. Example
III. Economic Systems
IV. The Knowledge Economy
V. The Intellectual Property Economy
3: Building Blocks of the Intellectual Property Economy
I. Introduction
II. The Information Hierarchy: Data, Information, Knowledge, Understanding and Wisdom
III. Qualities of Information/Knowledge
IV. Processing Information: Creativity, Invention and Innovation
V. The Currency of Intellectual Property
A. Patents
B. Trade Secrets
D. Trademarks
E. Copyrights
VI. Intellectual Capital
4: Strategic Implications for Business
I. Introduction
II. Evolution of the Concept of Strategy
III. The Views of Business Strategy
A. External Competitive Forces
B. Internal - Competence
C. The Contingency Theory View
IV. Hierarchy of Business Strategies
A. Introduction
B. Corporate Strategy
C. Business Unit Level Strategy
D. Functional Level Strategy
E. Functional Strategies
F. Business Unit Strategies
V. Strategy Development
A. The Strategic Plan
B. The Business Model
VI. Competitive Position
A. Michael Porter
VII. Intellectual Property and Competitive Position
5: The Economics of Innovation
I. Individual Motivation
II. Enterprise Motivations
III. Do Organizational and Individual Motivations Work Against Each Other?
IV. Economics of Innovation
6: The Linkage Between Innovation, Business and Intellectual Property
I. Relationship of Innovation and Intellectual Property?
A. The Output of Innovation is Intellectual Property
B. Defining Success
1. The Innovators Perspective
2. The organizational Perspective
II. Relationship of Innovation and Business
III. Relationship of Intellectual Property and Business
IV. Forging the disciplines of innovation, intellectual property protection and business
7: Fundamentals of Intellectual Property Strategy
I. Introduction
II. Examples of Successful Strategies
A. Trademark The Coca-Cola Company
B. Patents General Electric
C. Copyrights Walt Disney Productions
D. Trade Secrets - ______
III. Assets needed to effectively compete The linkage to Business and Innovation Strategy
IV. Acquisition
A. Internal development
B. Extrenal Acquisition
C. Open Innovation
V. Protection
VI. Leverage
VII. Relation of IP Strategy to Business Strategy
8: Acquisition Strategies
I. Sources of IP
A. Internal
B. External Sources
C. Open Innovation
II. Acquiring Internally Developed IP
A. Identifying Internally Developed IP
B. Documenting of Internally Developed IP
C. Assessing Internally Developed IP
D. Transfering Internally Developed IP
E. Communicating of Internally Developed IP
III. Acquiring IP from Outside sources
A. Identifying Outside Sources of IP
B. Documenting Externally Developed IP
C. Assessing Externally Developed IP
D. Transferring Externally Developed IP
E. Communicating Externally Developed IP
9: Protection Strategies
I. Layering IP
II. Building a portfolio
III. Building a streamlined portfolio
IV. Examples
10: Leveraging the Strategic Value of IP Through Enforcement
I. Enforcement
II. Competitive Intelligence
III. Enforce or License Decision
IV. Examples
A. Coca-Cola Product Substitution Program
B. Monsanto - Patent Enforcement Program
C. Disney Copyright Enforcement Program
11: Leveraging the Strategic Value of IP Through Licensing
I. Licensing for Revenue
II. BMI and ASCAP
III. Patent Pools
IV. Licensing
V. Cross licensing
VI. Transfer
12: Leveraging the Strategic Value of IP within the construct of economic and social policies
I. Standards Bodies
II. Securitizing
III. Auctions
IV. IP as the Business
A. Example - Lemelson
B. Example - Intellectual Ventures
V. Antitrust
VI. Public Relations
13: International Strategies
I. International Treaties
II. Differing Legal Systems
A. Advanced (US, Europe, Japan)
B. Evolving (India, Argentive)
C. Rudimentary ( TBD)
III. Costs
14: Portfolio Management Strategies
I. Portfolio Theory
II. Elements of Intellectual Property Portfolio Management
A. Managing IP Investments
B. Optimizing portfolio
C. Allocating Resources
D. Managing the Pipeline
III. Examples
15: Strategic Framework For IP Programs
I. Overview
II. Developing The Strategic Framework
III. Acquiring Intellectual Property
IV. Protecting Intellectual Property
V. Leveraging Intellectual Property
VI. Managing Intellectual Property
VII. Evolution of Straegic Framework
A. Rudimentary
B. Defensive
C. Ramp-up
D. Revenue Generating
E. Strategic
VIII. Implementing the Strategic Framework
16: Industry Specific Strategies
I. Telecommunications
II. Information Technology
III. Pharmaceuticals
IV. Energy Production
V. Retailing
VI. Financial
VII. Examples
A. Whirlpool
B. Wrigley
C. ITW
Appendix
I. Intellectual Property Law for Business Owners
A. Trade Secrets
B. Trademarks
C. Trade Dress
D. Right of Publicity
E. Copyright
F. Patents
G. Design Patents
H. Mask works
Table of Cases
Index
Christopher M. Arena is a partner in Woodcock Washburn LLP, a national intellectual property firm with offices in Atlanta, Philadelphia, and Seattle. He is the former Chief Intellectual Property Counsel at Cingular Wireless, where he was responsible for all aspects of intellectual property. Before that, he was Chief Patent Counsel at BellSouth and a founding officer of the BellSouth Intellectual Property Group of companies. He was an integral member of the deal teams that created Cingular Wireless and Cingular's subsequent merger with AT&T Wireless, the largest all-cash merger in history.
Eduardo M. Carreras is of counsel with the Atlanta office of Woodcock Washburn LLP. He is the former Chief Intellectual Property Counsel of the Coca-Cola Company, where he helped establish Coca-Cola's Global Procurement Function. He also led the group responsible for managing the Coca-Cola trademark-often considered the most valuable trademark in the world-and helped the company to embark on an innovative technology and patent licensing program.
"The authors credentials shine through in The Business of Intellectual Property as they successfully weave together business and legal concepts in a way that provides an accessible resource for business managers seeking to understand the nuances of intellectual property law.
Arena and Carerras successfully elevate the discussion that began in earnest with Rembrandts in the Attic to a level that is applicable to a more mature business climate."
Shane Nichols, partner at King & Spalding
Georgia Bar Journal
"Chris Arena and Ed Carreras have brought together two critical perspectives for practicing attorneys and senior executives: the legal view of intellectual property and the strategic view of delivering customer value. Using an approach that is thorough and nuanced, they have demonstrated how companies can align business and innovation models to extract the most value from ideas."
--Steve Walton, Interim Associate Dean and MBA Program Director, Goizueta Business School, Emory University
"Chris Arena and Ed Carreras have brought together two critical perspectives for practicing attorneys and senior executives: the legal view of intellectual property and the strategic view of delivering customer value. Using an approach that is thorough and nuanced, they have demonstrated how companies can align business and innovation models to extract the most value from ideas."
--Steve Walton, Interim Associate Dean and MBA Program Director, Goizueta Business School, Emory University
"In The Business of Intellectual Property, Chris Arena and Ed Carreras materially advance our understanding of how firms extract value from innovation and intellectual property. With the use of thoughtful (and often entertaining) case studies, they demonstrate why intellectual property protection should be part of an innovation strategy linked to a strong business plan, and also why a firm's innovation strategy must recognize how particular markets value very differently various types of intellectual property."
--Roger J. Dennis, Dean, Drexel University College of Law
"The book is a fascinating read that turns the spotlight on intellectual property and makes readers eager to learn more. For those who thought intellectual property was boring, I highly recommend The Business of Intellectual Property. Its authors refute that notion with this captivating work"
-Deborah L. Rusin Research Librarian, Latham & Watkins, Chicago
