Working With Underwriting To Define And Sell The Insurable Risk. Maureen Veterano.

Oct 3, 2010Download as PPTX, PDF0 likes233 views

The document discusses considerations for underwriters in defining insurable intellectual property risks and products for patent infringement insurance. It provides details on scheduling different types of intellectual property like patents, trademarks, copyrights, and trade secrets. It also discusses factors like ownership, right to enforce protection, abatement/enforcement history, defense against infringement claims, and characteristics of good vs less attractive candidates for this insurance.

Pi2Patent Insurance Institute 2010Working with underwriting to define the insurable and sellable riskPresented by: maureenveterano & robin fletcherCelebrating 20 Years as the Industry Leader inIntellectual Property Insurance

Flow of InformationTechnicalPrivilegedClaimsApplicationQuote Binder

Considerations for UnderwritingScheduling IP for coverageScheduling Products for coverageAbatement / Enforcement Defense

Abatement / EnforcementAny protectable intellectual property:Patents Trademarks CopyrightsTrade Secrets

Abatement / EnforcementPatents: Issued or Pending # if published or issued.Unpublished: Docket or serial # and copy of filing

Abatement / EnforcementTrademarks: registered, pending or common law # if registered or pending. Identifying mark and scope of use if common law (products / geography).

Abatement / EnforcementCopyrights: registered or with rights pre-filing # if registered. Registered or not, need information on the work – samples, online, description, photo, design.

Abatement / EnforcementTrade SecretsUniform Trade Secrets Act protects: 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 … and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

Abatement / EnforcementTrade Secrets – SchedulingDefined as submitted or by reference, so underwriting can understand scope and protection.May not need to reveal actual secretsReference to recipe, formula or customer list

Abatement / EnforcementForeign Equivalents ?PCT’s ?

Abatement / EnforcementMust Have:Ownership, Right To Enforce orProtectable Interest.No “clouds on title.”

Abatement / EnforcementOwnership Issues?Inventorship questions?Shop rights / ex-employers or ex-employees?

Abatement / EnforcementNOT YET INFRINGED / NO COMMERCIAL ACTIVITYObjective test:Unauthorized INFRINGEMENT, or the manufacture, use, sale, offer for sale or the development to the point of being ready for sale must first begin during the POLICY PERIOD or during a previous continuously insured POLICY PERIOD

Abatement / EnforcementINSURE EARLY AND OFTENPatent applications as soon as filed

Abatement / EnforcementWHO IS A GOOD CANDIDATE?Valuable rights? % of actual or expected sales?Current licensing revenues?

Abatement / EnforcementBest Candidates for Abatement:Protecting advantage in marketLacks ready cash or credit to self-fundRecent experience with IP conflictLicensor to well-positioned licensee who may be tempted to breach

Abatement / EnforcementLess Attractive Candidates for Abatement:Patent holding companiesBusiness of finding existing infringers inconsistent with pre-existing exclusion.

DefenseScheduled CoverageDefined “Product”Physical productProcessMethod of businessTrademarksProduct configuration / trade dressWebsites – technical and contentSoftwareMedia

DefenseDefining the “product”:SchematicsFlow chartsSubmit actual sample

DefenseDefining the “product”:Defined by insured’s own IP:As “disclosed and claimed” in patentBetter to have specific claims than broad application claimsBUT: IP may not cover entire product to be sold

DefenseCollections of “products”Catalogs / .pdf’s

DefenseWith opinion suppliedNon-infringement opinion with specific IP distinguishedRelying on invalidity arguments

DefenseTime on the marketLong time – lower riskEmerging against well-established industries:Insurable, but Higher risk

DefenseSource of products:Develop own products?Buy from others?Diligence? Chance to network with attorneys.

DefenseOffering as benefit to customersINSURED THROUGH:

This document provides an overview of intellectual property (IP) types including trade secrets, trademarks, copyrights, and patents. It discusses Virginia Tech Intellectual Properties' (VTIP) mission to license university technologies to help them become commercial products that benefit society. VTIP evaluates inventions for patentability, commercial potential, conducts market research, negotiates licenses, and has various example technologies available for licensing.

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This presentation lays out basic information and topics for early stage start-ups to consider concerning intellectual property, such as patents, trademarks, and copyrights. For more information and resources, visit www.suiter.com. Matt Poulsen is a patent attorney and co-owner of Suiter Swantz IP. He represents clients including large Fortune 500 companies, universities, start-up companies and individual inventors. His practice is generally focused on IP procurement and protection, including U. S. and foreign patent preparation and prosecution, patentability and freedom-to-operate analysis and various trademark, copyright and trade secret matters. Matt also advises clients with respect to various start-up related activities, such early-stage IP strategy. Matt is admitted to the Nebraska Supreme Court and the U.S. District Court, District of Nebraska, and is registered to practice before the United States Patent and Trademark Office.

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Managing IP and InfographicOswald Companies

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John M. Paolino of BakerHostetler provides an overview of intellectual property (IP) and the importance of understanding its value and risks. While IP is an intangible asset that can provide market dominance, its role is often misunderstood or overlooked. Additionally, a competitor's IP may pose overlooked or misunderstood risks. It is important to reevaluate freedom to practice investigations and IP processes to avoid challenges. Conducting an IP audit can help evaluate an organization's practices, ownership of IP assets, freedom to practice, and acquisition of IP rights.

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This document outlines a presentation on aligning intellectual property with corporate strategy and developing corporate patent practices. It discusses screening corporate objectives to define IP objectives, incorporating freedom to operate considerations, creating and managing ideas, and connecting an IP strategy to a strategic technology map and market scenarios to anticipate the future. The overall message is that a strong IP strategy is essential for businesses to navigate risks and maintain competitive advantages.

Ignite your.. ip strategy v1Alan Scrase

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The document discusses various tools and strategies for managing an intellectual property portfolio, including conducting a patent landscape analysis to understand competitors and technology trends, using innovation capture to document new ideas, performing IP health checks to ensure the portfolio remains aligned with the business, and exploring opportunities to commercialize unused patents or acquire new patents to strengthen coverage.

Frank Ip �ݺ�ߣs For HighlandMichael Gaiss

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Ip policyAltacit Global

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This document outlines the key aspects of an intellectual property policy for universities and research institutions. The policy is intended to encourage innovation, clarify ownership of intellectual property, and provide equitable distribution of monetary benefits from intellectual property. It addresses issues like coverage of the policy, ownership and disclosure of inventions, marketing and licensing patents, revenue distribution, and the rights and obligations of inventors and the institution.

Plan for the Chief Intellectual Property Officerjrstorella

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The document outlines a plan for a Chief Intellectual Property Officer to strategically manage a company's intellectual property. It recommends forming a patent committee to make IP decisions and develop an IP budget. The plan details strategies for building an exclusionary patent portfolio, ensuring freedom to operate by clearing products of IP barriers, policing competitors, and managing relationships with investors and licensees. The goal is to create company value through the strategic use of intellectual property.

What Innovators Need to Know About IP Protection: A Business-Focused ApproachThe Hutter Group: IP Business Strategy

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Trade secrete litigationRajalingam Balakrishnan

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This document discusses trade secret litigation and protection. It begins by explaining that trade secret litigation involves violations of trade secret law through misappropriation or violations of non-disclosure agreements. It then outlines the process of trade secret litigation, including filing complaints, discovery, trial procedures, and protecting trade secrets during litigation. Finally, it discusses ways companies can protect trade secrets, such as physical security measures, contractual protections like non-compete agreements, and utilizing other intellectual property protections like patents and copyrights.

IPCalculus - Patent SearchIPCalculus

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Intellectual Property Rights for Business Ritu Sah

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An IP audit is a systematic review of a business's intellectual property assets, including identifying owned IP, preserving existing IP value, finding new profit opportunities, preventing disputes, and facilitating transactions. It should identify readily identifiable IP and external influences. Well-managed IP portfolios can provide barriers to entry, attract investors, and allow selling the portfolio. An IP strategy should consider patents, trademarks, trade secrets, filing timelines, and avoiding undesirable brand meanings. IP brokers can help monetize inventions by analyzing assets, preparing marketing portfolios, contacting buyers, and assisting with transactions. IP insurance can financially protect against infringement suits and cover legal costs of disputes and enforcement.

MR12CD Tuesday 13h00 - Cordilia7391456

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This document outlines an IP strategy presented by Cordelia Mashau. The vision is to be a world-class innovation agency that enables technological innovation to benefit South Africa's socio-economics. The mission is to deliver socio-economic value through technological innovation across the economy. The presentation discusses different types of intellectual property protection including patents, designs, trademarks, copyright, plant breeders' rights, and trade secrets. It provides advantages and disadvantages of each approach and things to consider when selecting an IP strategy, such as commercialization strategy and target markets.

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Working With Underwriting To Define And Sell The Insurable Risk. Maureen Veterano.

1. Pi2Patent Insurance Institute 2010Working with underwriting to define the insurable and sellable riskPresented by: maureenveterano & robin fletcherCelebrating 20 Years as the Industry Leader inIntellectual Property Insurance

2. Brokers and Underwriters

3. Flow of Information

4. Flow of InformationTechnicalPrivilegedClaimsApplicationQuote Binder

5. Considerations for UnderwritingScheduling IP for coverageScheduling Products for coverageAbatement / Enforcement Defense

6. Abatement / Enforcement

7. Abatement / EnforcementAny protectable intellectual property:Patents Trademarks CopyrightsTrade Secrets

8. Abatement / EnforcementPatents: Issued or Pending # if published or issued.Unpublished: Docket or serial # and copy of filing

9. Abatement / EnforcementTrademarks: registered, pending or common law # if registered or pending. Identifying mark and scope of use if common law (products / geography).

10. Abatement / EnforcementCopyrights: registered or with rights pre-filing # if registered. Registered or not, need information on the work – samples, online, description, photo, design.

11. Abatement / EnforcementTrade SecretsUniform Trade Secrets Act protects: 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 … and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

12. Abatement / EnforcementTrade Secrets – SchedulingDefined as submitted or by reference, so underwriting can understand scope and protection.May not need to reveal actual secretsReference to recipe, formula or customer list

13. Abatement / EnforcementForeign Equivalents ?PCT’s ?

14. Abatement / EnforcementMust Have:Ownership, Right To Enforce orProtectable Interest.No “clouds on title.”

15. Abatement / EnforcementOwnership Issues?Inventorship questions?Shop rights / ex-employers or ex-employees?

16. Abatement / EnforcementNOT YET INFRINGED / NO COMMERCIAL ACTIVITYObjective test:Unauthorized INFRINGEMENT, or the manufacture, use, sale, offer for sale or the development to the point of being ready for sale must first begin during the POLICY PERIOD or during a previous continuously insured POLICY PERIOD

17. Abatement / EnforcementINSURE EARLY AND OFTENPatent applications as soon as filed

18. Abatement / EnforcementWHO IS A GOOD CANDIDATE?Valuable rights? % of actual or expected sales?Current licensing revenues?

19. Abatement / EnforcementBest Candidates for Abatement:Protecting advantage in marketLacks ready cash or credit to self-fundRecent experience with IP conflictLicensor to well-positioned licensee who may be tempted to breach

20. Abatement / EnforcementLess Attractive Candidates for Abatement:Patent holding companiesBusiness of finding existing infringers inconsistent with pre-existing exclusion.

21. Defense

22. DefenseScheduled CoverageDefined “Product”Physical productProcessMethod of businessTrademarksProduct configuration / trade dressWebsites – technical and contentSoftwareMedia

23. DefenseDefining the “product”:SchematicsFlow chartsSubmit actual sample

24. DefenseDefining the “product”:Defined by insured’s own IP:As “disclosed and claimed” in patentBetter to have specific claims than broad application claimsBUT: IP may not cover entire product to be sold

25. DefenseCollections of “products”Catalogs / .pdf’s

26. DefenseWith opinion suppliedNon-infringement opinion with specific IP distinguishedRelying on invalidity arguments

27. DefenseTime on the marketLong time – lower riskEmerging against well-established industries:Insurable, but Higher risk

28. DefenseSource of products:Develop own products?Buy from others?Diligence? Chance to network with attorneys.

29. DefenseContract Requirements:

30. DefenseOffering as benefit to customersINSURED THROUGH:

31. What are the applicant’s concerns?

32. Specific known risk?

33. Most important terms:

34. Price? SIR/Coinsurance? Exclusions?

35. Deal breakers?Tell Underwriters Up Front:

36. SellableWould WriteWould BuyOn Market / Sales Independent developmentRisk management/clearanceContract requirementCompetitive pressuresInsurable Risk CopyistInvalidity defenseExisting disputesBusiness RiskLow techLow sales

37. Write More Business

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Working With Underwriting To Define And Sell The Insurable Risk. Maureen Veterano.

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