Intellectual Property Management

Introduction

 

Intellectual Property (IP) is an asset class that provides a competitive advantage in innovation commercialisation. Strategic management of IP is thus crucial to achieve an idea’s commercial success. This strategic management can happen through a number of conventional processes, namely, identifying different types of IP asset classes that could be protected, valuing such IP assets, licensing the IP to third parties in lieu of generating cash flow et al. The main thing of note is that the strategic management of IP should not be looked at in an isolated sense from corporate strategy, and a detailed plan of IP strategy implementation should be chalked out right at the onset of undertaking innovation. Integration of IP strategy should happen in conjunction with innovation portfolio management and engineering design and development at the inception of idea generation, which should then be documented correctly and analysed well before any implementation commences.

Service Offer

 

1. Patent search for worldwide national patent office databases (e.g. IP Australia, USPTO, EPO, JPO, WIPO et al);

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2. Trade/Service mark search for only English speaking national trade mark office databases (e.g. IP Australia, USPTO, WIPO);

 

3. Copyright prosecution (USPTO)

 

(a) Software;

 

4. Trade/Service mark prosecution (IP Australia, USPTO, Madrid System)

 

5. Trade/Service mark examination response

 

(a) IP Australia – direct;

 

(b) USPTO – direct for Response to Office Actions only (issued by trademark examining attorneys of the USPTO);

 

6. Patent prosecution (IP Australia, USPTO, PCT System)

 

7. Patent drafting in the domains of electronic systems, electrical and electronics engineering, physics, information technology (IT), computing, computer systems, software engineering, networking, telecommunications, system integration (multi-disciplinary engineering areas involving a standalone product or service where a combination of electronics, software and IT are used);

 

(a) Areas of special expertise: Information security, secure data management in communications and storage, IT risk management, IoT (Internet of Things), intelligent devices and systems, game development, software design for any custom application

 

8. Patent interpretation;

 

9. IP Valuation

 

(a) Valuation of patents, trade/service marks, copyrights and general intangible IP asset classes;

 

10. Advisory on IP protection insurance

 

(a) Protection against IP-related litigation (especially from NPEs (non-patent entities));

 

11. Advisory on setting up IP holding entities

 

(a) Setting up legal structures that inherently protect IP from enforcement of overseas judicial orders;

 

12. Advisory on IP Licensing

 

(a) Drafting contracts on licensing and assigning IP;

 

(b) Knowledge of multi-jurisdictional contract laws that help structure an optimal licensing agreement tax, control and operation-wise

 

13. Advisory on Strategic management of IP

 

(a) Using IP to raise venture capital;

 

(b) Advisory on cross-licensing and joint ventures;


(c) Advisory on drafting NDAs (Non-Disclosure Agreements)

Value Proposition

 

1. One-stop shop for all your innovation commercialization needs from IP strategy management, innovation portfolio management, engineering design and development to R&D Tax Incentives and commercialization capital raising;

 

2. Over the last twelve months, the team has successfully prosecuted five service marks with the USPTO (three through the Madrid System), three software copyrights with the US Copyright Office and one Australian innovation patent. The team has also drafted and submitted six provisional patents with the USPTO and has converted two of them into US national patents;

 

3. The team has successfully submitted five internet engineering drafts to the IETF, one engineering standard input at the ITU-T and two invention disclosures for patent drafting in the domains of electronic systems and telecommunications;


4. Partnership with leading patent and trade mark attorneys in Australia, USA, Japan and Europe to draw in their knowledge and expertise in prosecuting IP asset classes.

T: (03) 9103 1353

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