Note: Each engagement described below was conducted under a non-disclosure agreement, thus, company names and contacts are omitted.
A. Client and Circumstance: Chemical engineers (contractors) sought Knowledge Protection Strategies’ services over a dispute about potential IP rights following their on-site R&D work that produced a new fire retardancy application for particular housing materials. The process presented the housing materials manufacturer where the chemical engineers conducted their R&D with (a.) substantial manufacturing (cost) efficiencies, (b.) being first in market space, (c.) price premiums, and (d.) significant competitive advantages.
Challenges: Assess the client’s credibility and veracity of their grievance. Unravel and sequence their R&D contributions. Determine viability and scale of market demand for the new process. Estimate the value of the process to the manufacturer and the industry. In many instances when an employer – contractor dispute arises about IP rights, there is a related employment law (rights) issue.
B. Client and Circumstance: The founders of a web-based services company in the higher education sector sought Knowledge Protection Strategies’ services (through board member referral) to provide guidance on two related issues; (a.) intellectual property concerns over control and ownership of their software program, and (b.) preparation for an upcoming (second round) venture capital meeting.
Challenges: First, the company had no IP protections in place, i.e., patent or trade secrecy addressing the software. Second, there were no internal procedures in place to safeguard the distinctive processes the software program supported. Third, there was no advance preparation and/or strategies how to address VC- investor questions about the absence of intellectual property rights to the software. Fourth, determine if the technology (software program algorithm) had ‘dual-use’ characteristics/potential. Fifth, determine if the use of this software would violate existing copyright.
C. Client and Circumstance: Entrepreneurs sought the services of Knowledge Protection Strategies (initially) to help safeguard a ‘mark’ they had developed and intended to use as the basis to brand-market a new product.
Challenges: The initial request for services changed when the clients were subsequently notified their mark application had been rejected by USPTO (due to similarity and consumer confusion). The clients recognized the (probable) finality of the USPTO decision but elected to re-engage my services to identify-assess other strategies-options that could allow them to proceed and without requiring total abandonment of their initial mark.
D. Client and Circumstance: The sole proprietor of a security technology company was sued by a former employer. The suit alleged misappropriation-theft of trade secrets which were being used to promote and operate the security technology company. Knowledge Protection Strategies was engaged by the defendants’ legal counsel.
Challenges: First, unravel and bring clarity to the circumstances and allegations. Second, assess the veracity of the clients’ claims relative to the technology’s origins, development, and the contested trade secrets. Third, assess the former employer’s practices, policies, and procedures with respect to the requisites of trade secrecy and industry best practices.
Solutions: Develop and apply protocols to unravel – assess the salient components of the charges and provide counsel with a comprehensive report to oppose an injunction against defendant and in discovery
E. Client and Circumstance: An insurance firm engaged me at a time when I was a professor at Southern Illinois University to provide expertise regarding factors/variables that contribute to – influence:
Challenges: First, examine all elements of insurance fraud, identify commonalities and correlate those findings to individuals and/or organizations that would likely seek IP insurance coverage. Second, identify indicators - precursors of legal entanglements-ensnarements applicable to intellectual property.
Solutions: Prepare a comprehensive report that identified/described how to identify and assess:
F. Client and Circumstance: University-based scientist sought guidance about retaining control (ownership) of scientific data evolving from sponsored agricultural research.
Challenge: Reduce the vulnerability of the research data to misappropriation.