Intellectual Property: Exploitation, and Infringement Damages, 2008 Cumulative Supplement, 4th Edition

by Russell L. Parr; Gordon V. Smith (President, Associated Valuation Technologies, Inc.)

• ISBN13: 9780470135792
• ISBN10: 0470135794
• Format: Paperback
• Copyright: 2008-04-01
• Publisher: Wiley

Summary

This supplement contains the following new chapters: Chapter 1B, U.S. Congress Flirts with Disaster, discusses elements of the Patent Reform Act of 2007 and the potential for great harm to the U.S. economy. With the U.S. economy highly dependent on intellectual property, changing the patent rules is dangerous. This chapter outlines some of the pitfalls with which Congress is flirting.Chapter 33A, The Magnitude and Meaning of Royalty Misreporting, by Debora R. Stewart, CPA and Judy A. Byrd, CPA of Invotex Group's Intellectual Property Management & Finance practice highlights a critical element of IP management too often neglected. After development of intellectual property and significant time and money in licensing negotiations, the actual collection of royalties that are due is not thoroughly managed. In their work, Ms. Stewart and Byrd have found disturbing errors in reporting and paying royalties. Sometimes the errors are caused by outright fraud by a licensor. More often though, errors occur from miscalculations, incorrect interpretation of license agreements, omission of products from the royalty base covered in the license agreement, and several other honest, but costly mistakes. In this chapter the most common errors are identified along with lessons that can be implemented in your next license agreement so all royalties that are due a licensor are actually collected.Chapter 33B, Intellectual Property Audit and Management by Ron Carson, discusses the importance of knowing about your intellectual property so it can be integrated in business strategies. The chapter explains the importance of conducting an IP audit and the strengths and weaknesses of the different methods that are currently being employed. Software solutions are discussed including the enterprise software product offered by his firm Innovation Asset Group.

Author Biography

Russell L. Parr, CFA, ASA, is president of IPRA, Inc. (Intellectual Property Research Associates; www.ipresearch.com ). He is an expert in determining the value of intellectual property. Mr. Parr' s books about intellectual property value and management are published in Japanese, Korean, Italian, and English. He is dedicated to the development of comprehensive methods for accurately defining the value of intellectual property.

Highlight assignments conducted by Mr. Parr have included the valuation of the Dr. Seuss copyrights and the patent portfolio of AT&T. Mr. Parr also has conducted valuations and royalty rate studies for communications technology, pharmaceuticals, semiconductor process and product technology, automotive battery technology, lasers, agricultural formulations, biotechnology, computer software, drug delivery systems, medical products technology, incinerator feed systems, camera technology, flowers, consumer and corporate trademarks, motivational book copyrights, and cosmetics. His opinions are used to accomplish licensing transactions, acquisitions, transfer pricing, litigation support, collateral- based financing, and joint ventures.

Mr. Parr has written 24 articles that have been published in various professional journals. He has spoken at over 30 conferences regarding the value of technology, including those sponsored by the World Intellectual Property Organization in Singapore and in Lima, Peru. He also has testified about the value of companies and intellectual property over 40 times at deposition trial or for arbitration.

Mr. Parr has a master ’ s in business administration from University (1981); a bachelor of science degree in electrical engineering from Rutgers University (1976); and coursework toward Ph.D. in the International Business Management Program at Rutgers University. His professional designations include Chartered Financial Analyst (CFA) from the Association for Investment Management and Research and Accredited Senior Appraiser (ASA) of the American Society of Appraisers.

Among Mr. Parr's writings are five books published by John Wiley & Sons, Inc. and three books published by IPRA, Inc. His Wiley books include Valuation of Intellectual Property and Intangible Assets, Third Edition; Intellectual Property: Licensing and Joint Venture Profit Strategies , Second Edition; Intellectual Property Infringement Damages: A Litigation Support Handbook, Second Edition; Investing in Intangible Assets; and Corporate Strategies for Maximizing Value. His books published by IPRA, Inc. include Royalty Rates for Pharmaceuticals and Biotechnology, Fifth Edition; Royalty Rates for Technology, Third Edition; and Royalty Rates for Trademarks and Copyrights , Second Edition.

Gordon V. Smith is chairman of AUS, Inc. and president of AUS Consultants. He has advised clients in valuation matters for over 40 years. His assignments have included appraisals of nearly every type of tangible and intangible property as well as consultations regarding royalty rates, economic life, and litigation damages for intellectual property. Clients have been many of the Fortune 500 and major international law firms as well as research and educational institutions, regulatory bodies, and the U.S. government.

Mr. Smith, a graduate of Harvard University, has lectured on valuation subjects throughout the Americas, in Europe, and extensively in Asia. He has taught university - level courses at Singapore Management University and conducted seminars for the IP Academy (Singapore), the Chinese government, the U.S. Treasury Department, and numerous private organizations and corporations, and has lectured in various countries for the World Intellectual Property Organization.

He is a member of the Advisory Committee on Intellectual Property and Board of Trustees of Pierce Law, whose intellectual property curriculum is nationally recognized. He is also an adjunct professor there and a regular guest lecturer. An active member of the International Trademark Association, Mr. Smith is also a member of the Licensing Executives Society. His writings include many professional papers and articles that have appeared in publications here and abroad.

He has authored four books published by John Wiley & Sons, Inc.: Corporate Valuation: A Business and Professional Guide; Trademark Valuation; Valuation of Intellectual Property and Intangible Assets (coauthor); Intellectual Property: Licensing and Joint Venture Profit Strategies (coauthor); and has contributed to several other Wiley intellectual property and tax reference books.

Table of Contents

Preface	p. xv
Valuation	p. 1
Intellectual Property Landscape (New)	p. 3
80% of Corporate Value Is Intellectual Property and Intangible Assets	p. 4
Over Seven Million Patents	p. 6
Corporations Own the Most Patents	p. 7
All Industries Are Patenting Inventions	p. 8
Trademarks	p. 10
Trademarks Are Supported with Huge Ad Spending	p. 11
Copyrights	p. 12
Trade Secrets	p. 12
Business of Licensing	p. 15
U.S. Congress Flirts with Disaster (New)	p. 25
Patent Litigation Venue	p. 27
Patent Infringement Damages	p. 27
Injunctions for Only Competitors	p. 29
Harming Our Only Economic Advantage	p. 31
Risk-Adjusted Cash Flows (New)	p. 32
Required Rates of Return	p. 33
Capital Asset Pricing Model	p. 36
Build-Up Method	p. 41
Venture Capital Rates of Return	p. 42
Probability of Success	p. 45
Conclusion	p. 49
Dealing with Risk and Uncertainty in Intellectual Property Valuation and Exploitation (New)	p. 51
Risk versus Uncertainty	p. 53
Decision Analysis and Decision Trees	p. 55
Decision Tree Components and Conventions	p. 56
Monte Carlo Techniques	p. 63
Markov Chains	p. 66
Obtaining Information from Indirect Observation: Shadow Pricing	p. 70
Bayesian Analysis	p. 72
Option Pricing Models	p. 75
Limitations on Rationality in Decision Making: The Effects of Perception and Biases on Decision Making	p. 78
Conclusion	p. 79
Rights of Privacy, Publicity, and Celebrity Persona (New)	p. 81
Introduction	p. 81
Legal Underpinnings	p. 84
Trademark Rights	p. 87
Copyright	p. 88
Legal Uncertainties and Solutions	p. 90
A Photography Issue	p. 91
Conclusion	p. 93
Licensing	p. 95
The Magnitude and Meaning of Royalty Misreporting (New)	p. 97
Introduction	p. 97
"Why?" versus "How?"	p. 98
Math Errors: 5% Error Rate	p. 101
Royalty Rate Errors: 4% Error Rate	p. 102
Transfer Prices: 4% Error Rate	p. 104
Unreported Benchmarks and Milestones: 5% Error Rate	p. 105
Unreported Sales: 16% Error Rate	p. 106
Disallowed Deductions: 9% Error Rate	p. 106
Unreported Sublicenses: 17% Error Rate	p. 107
Questionable License Interpretation: 40% Error Rate	p. 107
Conclusion	p. 108
Intellectual Property Audit and Management (New)	p. 109
Introduction	p. 110
Intellectual Property Is Important	p. 110
But Intellectual Property Is Frequently Mismanaged	p. 111
Why the Intellectual Property Dichotomy?	p. 111
The First Step: An Intellectual Property Audit	p. 112
From IP Audit to IP Management	p. 114
Insufficient Approaches	p. 115
A New Intellectual Property Management Paradigm	p. 116
Available Tools	p. 116
Benefits of Intellectual Property Management	p. 117
When to Do an Intellectual Property Audit	p. 118
How to Do an Intellectual Property Audit	p. 120
Software Solutions to Make the Job Easier	p. 123
Conclusion	p. 126
Cumulative Index	p. 131
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