Tag Archives: chicago patent attorney

Change Management Protocols and Drafting Good Master Technology Service Agreements!

How do you draft a good Master Technology Service Agreement?  What do you consider?  What is reasonable? What is foreseeable?  What is too remote? How do you respond to an Evidence Preservation Letter? What is your clients’ doom and gloom fears?  These are all things that all technology and information technology consultants and teams have to consider and make good decisions on.  Without having a good team of professionals that can identify the areas of risk for the clients, the method and means of exploiting known or identified vulnerabilities, and creating a prompt data security protection protocol you may end up losing out from a change in ISPs or IT vendors.

Having good change management procedures is vital to the success of your clients and to protect them from many would be competitors looking to acquire your clients’ knowledge, trade secrets and intellectual property.  A good first step for protecting your clients is using good provisions in your Master Technology Service Agreements that all vendors have to comply with to ensure that the proper procedures are followed to ensure that key personnel, key clients, key vulnerabilities, key consultants and key terms and caveats are negotiated and drafted to protect against reasonably anticipated problems.

The Master TSA allows for a method of interjecting vital controls that can be adapted to the needs of the clients–sometimes all that is needed is a wise and seasoned Chief Technology Officer (“CTO”).  Other times–key schedules and predefined procedures to follow for implement changes in information technology services or hardware.  Sometimes good limitations on damages, warranties and representations and third party indemnification provisions are required to ensure that your clients are protected from potential errors in the change management procedures.

Finally, having good enforcement and corrective actions predefined and provided for in the Master TSA will save you a lot of headaches down the line–including delays based on the need for board or shareholder’s approval, manager or member’s approval, or similar delays that may be required in following corporate formalities.  Sometimes a rigid adherence to corporate formalities can allow a problem to become bigger over time and based on delays–it is generally advisable to deal with these types of data security problems sooner rather than later.

For more go to: http://www.bipeblawg.com, http://www.vrplawgroup.com, http://www.eebrunchclub.com

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Managing International Transactions for Corporate Clients!

There are variety of challenges and obstacles to assisting clients in making sure that they are able to transfer distribution channels, facilities, and operations overseas.  Clients need to understand the layout of the land, the local customs and regulations on … Continue reading

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New E-Book for Entrepreneurs: A Guide for Entrepreneurs and Business Owners!

We recommend a new book that has been published relating to a Beginner’s Series of Guides for Entrepreneurs relating to acquisition of angel, capital, funds, seed or VC funding for undertaking new efforts to try out and test out the … Continue reading

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Fourth Chicago Based IPO to over a Billion in Valuation! Are Startup and Tech Deals Coming back to Chicago?

Following in the success of LinkedIn, Groupon, Envestment’s IPOs, the Chicago startup, GrubHub went public on April 4, 2014, with shares soaring to over $40 dollars a share well above their $26 dollars per share Initial Public Offering (“IPO”) price.  The New Company was formed through a merger between Chicago based “GrubHub” and New York based “Seamless.”  Will the surge in IPO’s for tech companies continue?  Is there real value there for investors?  Many experts expect the shares to do fairly well, as the initial expected offering rose from the range of $20-$22 per share, all the way up to $26 per share late Thursday night before the Friday morning offering.

The IPO is great for GrubHub, but more importantly, the Chicago Startup community at large.  Chicago is beginning to build a reputation in recent years for its successful tech companies with even better IPOs.  GrubHub is the third recent, Chicago based Tech Company, to have an IPO valuation of over a billion dollars, nearly, $3 billion.  Groupon, the digital coupon and bargains merchant went public in 2011, and is currently, valued at $5.4 billion dollars.  While, a lesser known IPO for Envestnet, a local tech startup that produces software for financial advisors has led to a current valuation of $1.35 billion dollars.

All this success helps aids in Chicago’s current effort to rebrand the City as a Startup and Entrepreneurship HUB.  An effort shared by President Obama, who awarded Chicago, a coveted federally funded high tech hub on February 25th of this year.  Hopefully, this will continue to keep Chicago on the map as not only, a distribution network for products and commodities, but also a thriving City for innovation.  Does this mean more deal and intellectual property work for lawyers? Certainly, seems so as Entrepreneurs are starting to find success and providing a return on investment to Angels, VCs, Private Investors and public shareholders!

The City of Chicago received a total of $70 million for a Pentagon-led institute that focused on high-tech digital manufacturing and design.   The Startup Community in Chicago is flourishing, and there’s no better place or time for individuals with a dream and an idea, to start looking to make them into a real business.  If you or someone you know has an amazing idea for a startup business and is looking for investors, look no further than the Entrepreneurs and Executives Bruch Club’s Startup Competition (EEBC-It’s Just Brunch!).

At the EEBC’s 2014 Spring Competition, Startups were presented with the chance to pitch their businesses to actual equity and angle investors.  During the March 2014 Competition $2,000.00 in actual seed money was awarded to the top three teams by the EEBC-It’s Just Brunch!  See the Winners:  EEBC Its Just Brunch Spring 2014 Competition Winners Final

Meet the Panelists and Investors:  EEBC Startup Competition Special Thanks to Panelists_Final Proof_032514

The next EEBC Quarterly Competition takes place in June 2014 and the EEBC is currently, looking for qualified teams to compete.

Visit http://eebrunchclub.com/ for more information, http://www.chicagostartupattorney.com, or go to www.vrplawgroup.com

Patent Litigation: understanding infringement claims, the technology, industry, evidence, and business or patent monetization strategy!

Litigating patent infringement claims on behalf of Plaintiffs and Defendants requires a unique set of skills, and only some litigators understand what it takes.  You have to understand the client’s technology, the background of the industry, how to read and interpret patent claims, how to read and understand prosecution history, litigation strategy, discovery and evidentiary rules, ability to use experts and patent monetization strategies.

In addition, often times, you are dealing with a variety of other attorneys, inventors, professionals and personalities. However, to be effective as a Lead Counsel, you must be able to understand the details and how they fit into your overall strategy for establishing infringement, non-infringement, invalidity, anticipation, obviousness, lack of enablement, undue experimentation, walker process counterclaims, antitrust counterclaims, indirect, contributory and/or vicarious patent infringement.

Many times, people have a difficult time dealing with experts, other attorneys or individuals that may believe that they know the technology, patent monetization strategy, prosecution history, or industry better than you do. You have to be willing to accept input where needed, but be willing to stand your ground where needed to make sure that you are able to develop a cohesive litigation strategy that helps your clients win.

It is a challenging process that requires you to learn new technology quickly, use inventors, prosecution attorneys and experts’ input where needed, but at the same time push back to ensure that the overall strategy is not disrupted by focusing on irrelevant subject matter.  Patent litigation is a fun, but business driven necessity in our modern economy, and having the right patent litigation attorney represent you can be the difference between a winning and losing patent infringement suit.

Should I file for a patent? What is required to acquire a patent? Novelty, Non-obviousness and First to Invent requirements!

Patents can be for several different inventions including, but not limited to machines, apparatus, and compositions of matter, computer software, designs, and much more. An invention can be patented, if, several conditions are met. Under 5 U.S.C. 101. Patentable Inventions are “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.  The conditions of novelty and non-obvious subject matter are discussed in 35 U.S.C. 102-103.

Your invention must be novel. This means that you are the first to create the invention. Under 35 U.S.C. 102-103 novelty and other hurdles to acquiring patents are described in more detail The claimed invention must not have been patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. The invention must not have been known or used by the public in the United States. A person is not entitled to obtain a patent for something derived from or invented by another person.

The invention must have non-obvious subject matter. 35 U.S.C. 103 describes what non-obvious subject matter is. If the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner, in which, the invention was made. In determining whether, an invention is obvious, the Supreme Court set forth the following considerations: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; and (3) the number of differences between the prior art and the claimed invention. Graham v. John Deere Company of Kansas City, 383 U.S. 1(1966).

Of course there are exceptions to every rule. There are more guidelines to take into account, as well.  However, as long as you are the first inventor of the invention you can patent it. Should you choose to patent your invention or are considering patenting your invention a Patent Attorney should be your first step.

How to grow your business and manage business and legal risks? How to make your business more attractive to Investors?

One of the most practical ways that a business owner can grow his or her business and make it more attractive to investors is by creating an operations and/or process manual.   This provides a method of creating knowledge transfer between the owner, employees, and anyone else that may be working for you.   It is also a ready source of trade secrets and training materials for new employees.   If you can write down what you know, then you have to spend less time revising it to improve on your processes, training replacement employees, identify potential areas of further research and development to develop additional products or services.

After you have taken the time to create an operations plan you can use it to tweak your business plan and corporate strategy.  For example, are there processes that are prone to increase risk of liability, if so, then you can think about creating a subsidiary or another company to use to shield the less risky aspects of your business.   Maybe, a general commercial liability or products liability insurance policy will effectively help you manage the risk of liability.  The operations manual can be used to train new employees and protect against the risk of losing your employees to your competitors.  Maybe, you are growing at a rate that exposes you to federal and state employment statutes, and it makes sense in investing in a good employment manual and human resource training program.

Moreover, once you have written down your operations manual not only can you identify areas of innovation, but also potential areas for developing your intellectual property portfolio.  The Operations Manual can be the start of an IP development strategy to help create barriers to entry and increase the value of your business.  You can develop not only trade secrets, but patents, trademarks, trade dress, and copyrights.  In addition, you can identify customers that are generating a large portion of your revenues and try to cater to their need for your products or services.  You can identify the traits of these customers that will allow you to find other similar customers to whom you can pitch your product or services.

These customers may also be good sources for strategic alliances and partnerships or some form long term supply or services agreements.   Once, you identify who they are you can also develop product or service bundles and/or add on products or services.  However, if you have not created a method of tracking who your customers are, then you cannot scale your business.   If you have any concerns or questions about your business or corporate planning, then feel free to contact us.