PROTEX

Representative Engagements and Research Projects
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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.

Solutions:

  • Conduct an audit-assessment of the R&D process using relevant protocols, to assess the client’s credibility relative to their individual and collective contributions.
  • Apprise clients of options – strategies to try establish control and ownership of the contested innovation (R&D), i.e.,
  • Bring clarity to the circumstances in the form of objective assessments of the strengths and weaknesses of the grievance 
  • Prepare objective and succinct summaries of the circumstances to draw counsels’ attention to the salient issues so consensus on potential legal courses of action can be achieved more quickly. This brings efficiencies and cost savings to clients.

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.

Solutions

  • Conduct an audit-assessment to assess client’s credibility relative to their role in the development and ownership of the software program and related technology.
  • Determine the sequence of any collaborations related to the development of the software program and assess probability clients could continue to utilize the software program absent legal challenges over copyright violations.
  • Mitigate gaps in information protection/assurance practices that should be executed prior to meeting prospective investors/venture capitalists.
  • Counsel principal’s about IT insurance options related to the software program, particularly, its source code that represented the company’s operational – marketing center piece.
  • Develop a comprehensive set of anticipated questions VC’s - investors would likely ask and advised the principals on appropriate responses.
  • Secure legal counsel (with sufficient national stature, expertise) to write a ‘legal opinion’ about copyright issues related to the software program’s continued use.


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.

Solutions:

  • Current holders of the similar mark were identified.
  • An alternative business model was devised that involved negotiating a partnership and ‘royalty alliance with an existing (registered) mark holder.
  • Assess the company’s principals and potential receptivity to the proposal. 
  • Provide clients with viable negotiating points along with metrics to monitor any value enhancements that could evolve if the negotiation was successful.

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:

  • the probability and/or propensity clients will engage in fraudulent (intellectual property) insurance claims
  • strategies the insurance firm could use to proactively challenge the origins and/or ownership of the  innovation cited in an application for intellectual property insurance.

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:

  • opportunities (vulnerabilities) for R&D embellishment and/or fraud
  • vulnerability-attractivity of an insured’s innovation to competitor/business intelligence, infringement, misappropriation, data mining, economic espionage, and insider theft/misappropriation.
  • evidence of leakage – inadvertent disclosure of the innovation prior to or after a policy was executed
  • evidence of misplaced trust by the insured.

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.

Solutions:  

  • Provide practical and least intrusive techniques and procedures, respecting principles of the Bayh-Dole Act, academic freedom, and institutional openness to address the primary concerns.
  • Conduct ‘awareness and alertness’ seminars for the scientists’ research unit focusing on social engineering techniques and other illicit/unethical activities known to be specifically target university-based research.