Outsourced Manufacturing and Trade Secrets: Internal Controls

Outsourced Manufacturing and Trade Secrets: Internal Controls by David L. CohenWhen a company, for the soundest of business reasons, is exploring placing its crown jewels, its intellectual assets, in the hands of a third party, proper internal controls are vital.

A company’s internal controls may help to ensure proper:

  • Vetting and selection of the prospective manufacturer during the due diligence process.
  • Negotiation of the outsourced manufacturing relationship.
  • Management of the outsourced manufacturing transaction and relationship with the manufacturer.

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Outsourced Manufacturing and Trade Secrets: Risks & Benefits

Outsourced Manufacturing and Trade Secrets: Risks & Benefits by David L. CohenNearly all manufacturing processes involve a significant number of intellectual assets. These assets may include registered intellectual property (designs, patents, copyrights, or trademarks) or unregistered trade secrets, know-how, confidential information, or other intangibles. Read more

Outsourced Manufacturing and Trade Secrets: Outsourced Manufacturing

Outsourced Manufacturing and Trade Secrets: Outsourced Manufacturing by David L. Cohen

There are two common categories of outsourced manufacturing: toll manufacturing and contract manufacturing. While both these manufacturing options have distinct and clear characteristics, their strategic advantage is their ability to provide customers with valuable ways to save both time and capital on their product line development. Read more

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 challenging that for registered IPR, not to even mention it seems like a major flaw in the study.

Regardless, the conclusion seems promising and there is a lot of data included in the annexes to review.

Although there remain significant challenges to the
development of a sustainable commercial IP-backed loan
product, the lower rates of default and loss amongst
IP-rich firms suggests lenders could at least lower the
cost of lending to IP-rich firms, stimulating demand for
debt in this segment. Likewise there are opportunities to
stimulate the supply of finance by supporting the use of
intangible assets as collateral


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 (and if not, it should become) a regular part of company board discussions and review.

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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.

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Secrets to Using Intellectual Property to Increase Startup Value

This article by David L. Cohen, Ivan Chaperot, and Frederic Thiel was originally published by Bloomberg Law. Copyright 2018 The Bureau of National Affairs, Inc.

Secrets to Using Intellectual Property to Increase Startup Value

David L. Cohen

David L. Cohen, Esq.

David L. Cohen, P.C. – Kidon IP
123 West 93rd Street
New York, NY 10025
(917) 596-1974

Are Indian courts getting more efficient?!?

Very exciting news about how Indian courts seem to be using summary judgment to reach decisions sooner and more efficiently.  While there are always dangers, I hope that this procedure will do a lot to unclog the Indian courts in a positive way.


Are NPEs (or Privateers) coming to China?

Perhaps.  according to IAM, an article published in China this week has turned up two previously unreported patent infringement suits against Samsung in the country’s courts, both filed this year. In one case, an apparent Chinese NPE is asserting a patent formerly owned by Huawei against the South Korean company. In the other, a Texas NPE is suing Samsung with a former Sisvel patent.


The real question is what that means.  There already exist very high volumes of very low stakes patent litigation in China.  That said it is not clear to me that the ROI makes sense (yet) for the EDTX-style “troll” of yore – especially given the evidentiary burdens to filing suit in China, but with the right patents and the right political situation patent assertion for monetization purposes can make a lot of sense in China.

Given that one of these NPEs that IAM is pointing to argue for a trend is using Huawei patents, I wonder whether there is not some larger plan going that is designed to set up a patent assertion system favoring Chinese national champions and if some trolls inflict collateral damage as a result, so be it.  Time will tell.

The Future of Patents (for now) is Ex-USA

I have long (like 8+ years) been a proponent of the proposition that IP investors were too parochial, and that the future of IP was in Europe, Asia and elsewhere.   (In fact, I led a monetization campaign premised on that fact which achieved some small degree of notoriety….)  I am glad to see that the smart IP money concurs.   (I would be happier if the US were a better market for patents, but there is not much I can do about that.)