Total IP Portfolio Management

//Total IP Portfolio Management
Total IP Portfolio Management2018-10-03T01:57:58+00:00

Total IP Portfolio Management

Maximize the ROI on Your IP

Comprehensive IP services encompass counseling, protection, licensing and litigation for patents, designs, trademarks, copyrights, trade secrets, domain names and more.

Juhasz Law employs proprietary analytical frameworks to align IP lawyering to your business strategy.

Good management of an IP portfolio requires the know-how and expertise to discover, harvest and protect intellectual property on the front-end, and then to monetize and extract value from the IP on the back-end.

Juhasz Law is uniquely qualified to help you extract optimal value from your IP through Total IP Portfolio Management. Proprietary tools such as our 1-to-4 Transform, IPP2V program, Heart-of-the-Company Assessment, and Patent-Quality-Assessments provide a competitive advantage that your competitors will not have.

On the front end, we prepare, vet and file provisional, non-provisional, and international PCT patent applications before the U.S. Patent and Trademark Office (USPTO). Through our global network of foreign associates, we are poised to protect patents in foreign countries. Whether you need a patent, an intent-to-use trademark or an actual use trademark application, a copyright registration, a domain name registration, a trade name registration, mask protection, plant patent, software escrow agreement, or other IP protection, attorneys at Juhasz Law have the experience to secure the protection you need.

Total IP Portfolio Management goes beyond piecemeal protection of IP assets and value extraction. It takes a holistic view of the business, market, technology and intellectual property assets. We develop a strategic IP protection and value extraction roadmap that becomes the guide for future risk/reward IP decisions.

Based on our experience of success with IP protection programs, we define with reasonableness the benefits, expectations, alternative paths forward, and the tasks for those paths, including comparable budgets. We make recommendations for your IP protection and value extraction program that fits within your budget.

Collectively, our team has managed hundreds of IP portfolios, with experience in helping large, small and medium-size technology businesses. We understand the drivers for each particular business and how these drivers interrelate.

Rather than a cookie-cutter approach, we tailor your IP portfolio management strategy to showcase the unique aspects of your IP, and as importantly, the very tangible value the technology brings to your organization and the target audiences for your IP. Because of our experience and understanding, we are able to articulate a client’s technology features, potential impact on earnings, market share, competitive differentiation, barriers to entry and opportunities to extract value through bundling strategies. By understanding the legal issues, we can help you protect the selected bundling strategies under patent and IP laws to avoid over- or under-reaching. The result is a more credible IP protection program as viewed through the eyes of management, shareholders and target audiences.

Due Diligence

In mergers and acquisitions, licensing deals and other financial transactions, total IP value is easily overlooked by business lawyers. Juhasz Law attorneys vet whole IP portfolios, exposing problems and often, uncovering hidden value.

At Juhasz Law, we conduct IP transfers of all type. The transfer of IP rights requires extensive experience and accumulated expertise to avoid loss of value. The vehicle for an IP rights transfer may be a license, purchase or sale of a company in a merger or acquisition, a majority or minority investor transaction, a security interest agreement, software escrow agreements, and there are many other examples. IP rights transfer issues also arise in connection with divorce or wills and estates matters.

Our IP transfer expertise spans all phases of the process, beginning with preparation of the offer, design of and conducting the due diligence, negotiating the contract, closing the deal, and integration for the receiving party.

In the preparation phase, research is critical. Key steps in this phase are to review materials on the transaction, prepare target profiles, and conduct preliminary target searches. As part of this work, we draft the non-disclosure agreements (NDAs) and an evaluation NDA, prepare the action items list, prepare the legal due diligence requirement lists, and prepare transaction timelines.

In the offer phase, we coordinate involvement, determine structure and transaction terms, and update transaction timelines. As part of this work, we develop transaction timelines, transaction strategies, confidential agreements, letters-of-intent, term sheets, asset lists, and action items lists.
In the due diligence phase, we identify key focus areas, finalize and deliver legal due diligence request lists, conduct interview and meetings and site visits as necessary for data collection. As part of this work, we draft legal due diligence request lists, legal due diligence guidelines, kick-off meeting purpose strategy papers, agenda and presentation developments, and due diligence reports.

In the negotiations phase, we prepare and negotiate the license, the purchase or sale agreement, the majority or minority investor agreement, the security interest agreement and others. As part of this work, we draft the agreement, ancillary agreements, produce an issues list, action items list, signing action list, documents checklist.

In the closing phase, we finalize and file all required documents and prepare and submit all required corporate documents. As part of this work, we draft the closing checklist, closing action list, and secure agreements and performance of actions required to close or follow-up with performance of open items required for the closing to be completed later.

In the integration phase, we prepare documents and take the appropriate actions required to smoothly integrate the IP assets. As part of this work, we do a closing memorandum and post-closing milestone chart.

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