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CASE STUDY OF UNPLANNED INTELLECTUAL PROPERTY RIGHTS (IPR)

Engr. Michael Essien, Esq. Intellectual Property Consultant Essien Law Office, PLLC, St. Paul, Minnesota, USA & Abuja , FCT, Nigeria. CASE STUDY OF UNPLANNED INTELLECTUAL PROPERTY RIGHTS (IPR). The Case.

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CASE STUDY OF UNPLANNED INTELLECTUAL PROPERTY RIGHTS (IPR)

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  1. Engr. Michael Essien, Esq. Intellectual Property Consultant Essien Law Office, PLLC, St. Paul, Minnesota, USA & Abuja , FCT, Nigeria CASE STUDY OF UNPLANNED INTELLECTUAL PROPERTY RIGHTS (IPR)

  2. The Case • An organization (with staff) with an IPTTO has made an invention. As it usually happens, when not working with IPTTOs, the process to this invention was not formalized and no particular entity with any intellectual property experience or responsibility had input when the inventions and prototypes were created. • Now, the invention is being sought by potential licensors and some of the interested parties intend on commercializing the invention.

  3. Implication • No Definition of: • Rights for inventor • Protection of Invention • Patent application not filed • Ownership not clearly defined • Technology uncharted • Who owns the baseline invention • How will the next steps be handled?

  4. IP at Risk • Patents • Entity had access to IPTTO • IPTTO established to harness the inventive capacities of our organizations and individuals in such organizations • IPTTO could have • Helped protect invention by working with NOTAP. • Documented needed formalities • Process would define invention

  5. IP at Risk • Trademark • Commercialized invention would need a Trademark • Production issues not detailed become issues later.

  6. IP Ownership • Not working through the IPTTO already present at the institution • There is potential of losing the opportunity to improve on the invention • Potential owners or interested parties are now consulting lawyers to sue the institution or others • Costly distraction • The propriety of the invention not ascertained

  7. Assessment • Unplanned IPR, affecs: • Ownership • Protection • Prevention of litigation • Proper distribution of Proceeds • Proper documentation • Enhanced improvement • Future rights documentation

  8. IPTTOs on IPR • Provides: • Reference location for new IP • Help in filing patent applications • Facilitation of commercialization • Work with NOTAP to promote invention • Access to invention and other database of information • Promotion of useful inventions

  9. Planned IPR • Establishes: • Intellectual Property Rights • Protects Invention and other aspects not readily obvious • Determines who are inventors • Shares rights and responsibilities • Provides Next Steps • May generate Revenue for Owners and Institutions

  10. Lessons Learned • The process of protecting inventions are best channeled through IPTTOs established in the institutions. • NOTAP is available to provide resources otherwise not available at institutions • Where not available, contact NOTAP for establishment of IPTTOs to prevent the challenge this institution is having.

  11. For more info: Engr. Michael Essien, Esq. Intellectual Property Consultant Essien Law Office, PLLC, St. Paul, Minnesota, USA & ABUJA, FCT, NIGERIA messien@essienlaw.com GSM – 08058408055 US - +1.612.963.7329

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