Planning the acquisition of intellectual and property rights in the United States

Abstract

Discusses foreign investment in the USA, which often carries the prerequisite of acquisition of intellectual property rights. Talks about some of the issues that can arise when acquiring intellectual property rights and outlines some planning procedures which helps to protect the buyer from, for example, third party claims to the rights. Starts with patents and offers advice on checking ownership, acquiring all existing and pending patents, carrying out independent title searches in the US Patent and Trademark Office, as well as on‐line, checking to see if any legal action has been taken on patent infringement, acquiring assignments and licenses, reviewing employment agreements, checking for infringement of third party rights, and checking who has responsibility for recordation of the assignment. Moves on to trademarks – their ownership and registration, assignments and licenses, proper use, infringement and validity of the mark, recordation and cost of assignment. Deals next with copyrights and their ownership, licenses, proper use, validity and enforcement. Finishes with trade secrets and their ownership and maintenance of secrecy. Concludes that diligent investigation is the only way to safeguard that what you expect to get will be what you actually receive.