Entries by David L. Cohen, Esq.

Meet the IP Thought Leaders: Robert Colao

Over the course of my 20+ years practicing law, I have had the honor of working with many individuals who are involved at the cutting edge of all aspects of intellectual property. I consider myself very lucky that most of these folks, in addition to being luminaries in the industry, are good people and have […]

Patent Disputes Part 2 – Escalation or Litigation

If the patent demand letter situation escalates and you may be sued for infringement, you have options to consider. Consider filing a lawsuit for declaratory judgment (DJ). In certain cases you may file a lawsuit against a patent owner for declaration that you are not infringing on any valid patents. Knowing the patent owner’s litigation […]

Using IP to Access Funding

Very interesting study from the UK Intellectual Property Office and the British Business Bank about using IPR (at least in part) as collateral for business loans. Very odd, however, is that there is NO mention of trade secrets at all.  Which is quite surprising actually.  While analyzing trade secrets usage as collateral is (understandably) more […]

More on trade secret and company director liability

Donal O’Connell and I recently posted an article on trade secrets and director liability.   https://kidonip.com/news/company-directors-duties/ A great piece published by Columbia University Law School earlier this year http://clsbluesky.law.columbia.edu/2018/04/04/wachtell-lipton-discusses-risk-management-and-the-board-of-directors/  provides a good summary of the many issues related to risk management and the board of directors. Another piece  https://pomerantzlawfirm.com/publications/2018/2/8/recent-derivative-actions-highlight-directors-obligation-to-monitor-and-prevent-employee-misconduct discusses a recent case In re […]

Company Director’s​ Duties With Respect to Trade Secret Asset Management

Trade secret’s new found prominence: As we both have written previously, the changing nature of technology, product development and sales, and the patent enforcement landscape, have given trade secrets a new-found prominence. Trade secrets are now becoming a much more significant part of a company’s value. As a result, trade secret asset management is becoming […]

Trade Secrets: What Are They Worth?

Owners of intellectual property are often rightfully curious as to the value of their IP. Anyone who has tried to assign a value to patents outside of a litigation context and in the absence of robust licensing market for similar patents knows very well how challenging it is. Figuring out the value of trade secrets, on the […]

Trade Secret Audits – Why Bother?

What is a trade secret audit and why get one? At first blush an audit sounds expensive, distracting and unnecessary. Let’s face it, we live in the age of the long tail. Over the past few years, things people would have given a remote chance of coming to pass seem to be happening on a regular basis. What’s more, […]

Outsourced In-House Counsel: Is It for You?

Not everyone can have full-time legal staff. While there are many advantages to internal lawyers, hiring in-house counsel may not always be possible. Moreover, hiring traditional outside counsel is often expensive and inefficient and can sometime ineffective. Outsourced, in-house counsel can be an elegant solution. Below are some of situations when outsourced, in-house counsel can help. They include when […]

Outsourcing In-House Counsel: IP Department Creation

Previously I discussed the business case for engaging outsourced in-house counsel when a company is facing legal challenges related to standard essential patent (SEP) assertions,[1] in the context of trade secret services,[2] and when engaging outside litigation counsel.[3] In this article I discuss a slightly counter-intuitive use for outsourced in-house counsel: intellectual property (IP) department creation.

Outsourcing In-House Counsel: The Case of Litigation Management

Previously I discussed the business case for engaging outsourced in-house counsel when a company is facing legal challenges related to standard essential patent (SEP) assertions[1] and in the context of trade secret services.[2] In this article I discuss how outsourced in-house counsel can provide significant value-add when engaging outside litigation counsel. Where a company does not have […]