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Fundamental Intellectual Property Strategies

The following articles and presentations highlight the importance of implementing comprehensive intellectual property strategies.

In addition, find more Morgan Lewis publications on IP issues on our Intellectual Property page.

The Role of Intellectual Property in a Lean Startup – December 2011 (Morgan Lewis)
Intellectual Property attorney Scott Sherwin discusses the multitude of intellectual property issues startups face in this presentation.
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Checklist for Planning and Conducting an Effective FTO Search (Chapter 8), Emerging Life Sciences Companies Deskbook – Spring 2008 (Morgan Lewis)
This chapter sets forth aspects of planning for and conducting an effective FTO search.
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Conducting and Managing a Patent FTO Search (Chapter 9), Emerging Life Sciences Companies Deskbook – Spring 2008 (Morgan Lewis)
What, when, and where to search are all issues that are debated frequently when FTO searches are discussed. When a technology is in the early research phase, the outcome is generally not set. It can be speculative at best to predict what the final product will be, which may mean that a company diverts significant time and resources into searching a large number of research projects, only a few of which are destined to become candidate products. Alternatively, waiting too late to search is also a problem, as it usually means that the project and its derivative products are too far down the development and/or regulatory pipeline to change. Thus, timing searches and FTO analyses is a matter of striking a balance between cost and inflexibility.
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Freedom to Operate (Chapter 7), Emerging Life Sciences Companies Deskbook – Spring 2008 (Morgan Lewis)
As life sciences companies develop their patent portfolios, they come to realize that being able
to patent their inventions is only the beginning. They must also be able to use their inventions to make
and sell products.
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Intellectual Property Protection (Chapter 6), Emerging Life Sciences Companies Deskbook – Spring 2008 (Morgan Lewis)
A life sciences company’s intellectual property is generally among its most important assets, and the state of an emerging company’s intellectual property is of critical importance to its ability to obtain financing. This chapter provides a short summary of the protection afforded by each form of intellectual property protection and exclusivity, and describes what each can offer a life sciences company.
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Introduction to Intellectual Property Diligence: Somewhere Between Prosecution and Litigation
Morgan Lewis partner Chris Halliday delivers a presentation on intellectual property due diligence and cites specific examples.
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Negotiate a Licensing Agreement: Akustica Made the Right Moves Getting CMU Technology to Market, Pittsburgh TEQ
Morgan Lewis partner Peter Watt-Morse is quoted as Pittsburgh TEQ's "Getting It Done" series talks about negotiating a licensing agreement to get technology to market in an emerging technology company.
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A Sieve or a Safe: How Solid Is Your IP?
Morgan Lewis partners created this guide to guide entrepreneurs through multiple intellectual property issues, for the New Jersey Technology Council Entrepreneurs' Bootcamp (Spring 2011).
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Transferring Intellectual Property
In this presentation, Morgan Lewis partner Peter Watt-Morse discusses the major steps of transferring intellectual property strategy.
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