Intellectual Property Insurance
The webinar will begin shortly.
There is no audio at this time.
This presentation is being recorded
for your viewing pleasure at a future
date.
100% Participation in Polling
Questions is required to
receive credit for this class.
Even if you do not intend to
receive credit, please
participate in the polls.
Sponsored BY
The attendance and proctor forms are
available under ‘Materials’ in the
Webinar’s Console to the right.
The PowerPoint presentation is also
available under ‘Materials’.
You will receive the course number for
your state near the end of class.
Use the ‘chat’ window for questions
on the content.
www.InsuranceCommunityUniversity.com
1
.
Welcome to your
Insurance Community University
Audio
 All of you are currently on mute
• Un-mute your own system
• Telephone Option
•
•
Select Telephone on your screen
Dial in the PIN number so that your number becomes active
• Microphone and/or Speaker Option
•
You can use this option if you have a headset that you use with
your computer
www.InsuranceCommunityUniversity.com
.
2
Participation & Chat Window
 You will receive information from the monitor via the
‘Chat’ window.
• Please locate window in the control panel
 Q & A is welcomed during the presentation and at the
end of the presentation
 You will find the question box on your control panel
• Write your question in that box
and send it to the presenter/organizer
 The presenter will take those
 questions in the order submitted
www.InsuranceCommunityUniversity.com
.
3
DOI Requirements
 When you see a slide with the hand up
symbol, touch the “hand” icon on your control
panel
• Click ONCE only
 If you do not raise your hand, the monitor will
be in contact with you in the chat box
 If you are in a group, the designated proctor is
responsible to make certain you are all in
attendance at all times
= Hand is down
www.InsuranceCommunityUniversity.com
.
4
Polling
 Throughout the class we will be conducting
periodic polls
 We need 100% participation on the polls
 The polls are intended to check participation
but also to create discussion topics
throughout the presentation
www.InsuranceCommunityUniversity.com
.
5
Forms To Complete for CE
 After class ends
• Return attendance form
• Proctors – return your form to email
address
 Email address is in chat window or in email
sent to you today
www.InsuranceCommunityUniversity.com
.
6
DOI Requirements
 We will file your hours with the DOI after the
completion of this webinar and we have
received the attendance form.
 You have 48 hours to return the form
 You will be sent a Certificate of
Attendance/Completion by email. Please
retain this for your records for five years.
www.InsuranceCommunityUniversity.com
.
7
Internet Disruption
 If the presenter looses internet connection
STAY ON THE LINE
 The administrators will communicate with you
www.InsuranceCommunityUniversity.com
.
Internet Failure
 If the internet fails and all participants are
kicked off line by Go To Training or other
source then the seminar will be terminated
 You will receive instructions by email as to
how we will proceed
 This is a precautionary notice, only
www.InsuranceCommunityUniversity.com
.
9
This class is being recorded
 Available in the University
 Does NOT qualify for CE
www.InsuranceCommunityUniversity.com
.
Disclaimer
Insurance forms and endorsements vary based on insurance company,
changes in edition dates, regulations, court decisions and state
jurisdiction. The instructional materials provided in this class are
intended as a general guidelines and any interpretations provided do
not modify or revise insurance policy language. The authors of these
materials, are the Insurance Community Center (ICC) and Intellectual
Property Insurance Services Corporation (IPISC). In providing these
materials, ICC and IPISC assumes neither liability nor responsibility to
any person or business with respect to any loss that is alleged to be
caused directly or indirectly as a result of the instructional materials
provided.
Copyright 2010 – 2012 All Rights Reserved
www.insurancecommunitycenter.com
laurie@insurancecommunitycenter.com
www.patentinsurance.com
cbaxter@patentinsurance.com
www.InsuranceCommunityUniversity.com
.
11
Intellectual Property Insurance
Your Presenters Today
Chuck Baxter J.D.
Laurie Infantino AFIS, CISC, CIC, CRIS,
General Counsel
ACSR, CISR
Intellectual Property Insurance Services
President, Insurance Community Center,
Corporation
Insight Insurance Consulting
www.InsuranceCommunityUniversity.com
12
.
Intellectual Property Insurance
to Protect Companies’ Assets
Intellectual Property Insurance Services
Corporation
9720 Bunsen Parkway | Louisville, KY 40299
Toll Free: 800.537.7863 | Fax: 502.491.4888
Direct: 502.855.5310 |
www.patentinsurance.com
www.InsuranceCommunityUniversity.com
.
Intellectual Property Insurance to Protect Companies’ Assets © 2012 Intellectual Property Insurance Services Corporation
www.patentinsurance.com | 800.537.7863
Polling Question #1
www.InsuranceCommunityUniversity.com
.
Polling Question #2
www.InsuranceCommunityUniversity.com
.
Presentation Topics
 IP in the news—Examples of loss
 What is Intellectual Property
 Intellectual Property AND Liability Insurance
 Intellectual Property Law Issues
 Cyberspace, Intellectual Property Issues
 Intellectual Property and Insurance
www.InsuranceCommunityUniversity.com
.
16
IP in the News
You read about it everyday
www.InsuranceCommunityUniversity.com
.
17
Community Newsletter Articles
 What does a “Drive in Movie Theater and
Intellectual Property have in common?
 http://insurancecommunityuniversity.com/Un
iversityResources/InsuranceArticlesFREE/Articl
esDetail/tabid/270/ArticleId/310/What-doesa-Drive-in-Movie-Theater-and-IntellectualProperty-have-in-common.aspx
www.InsuranceCommunityUniversity.com
.
Community Newsletter Articles
 What do Ice Cream and Porn have in
common?
• http://insurancecommunityuniversity.com/
UniversityResources/InsuranceArticlesFREE
/ArticlesDetail/tabid/270/ArticleId/336/Wh
at-Do-Ice-Cream-and-Porn-Have-inCommon.aspx
www.InsuranceCommunityUniversity.com
.
Community Newsletter Article
 Tiffany Sues Costco
 http://insurancecommunityuniversity.com/Un
iversityResources/InsuranceArticlesFREE/Articl
esDetail/tabid/270/ArticleId/436/Tiffany-suesCostco.aspx
www.InsuranceCommunityUniversity.com
.
“Adidas Trademark Suit has Legs”
Boston Herald
Adidas was awarded a $304.6 million verdict
against Payless Shoe Source on May 5th for
selling knockoff, striped sneakers. Adidas is
poised to win even more from Wal-Mart
Stores, Inc. in a lawsuit making similar claims.
www.InsuranceCommunityUniversity.com
.
21
Mattel awarded $100 million in
Bratz lawsuit
 MGA and its chief executive officer were told
to pay a combined $90 million in three causes
of action related to Mattel’s employment
contract with designer Carter Bryant, who
developed the Bratz concept. The jury also
ordered MGA, Larian and subsidiary MGA
Hong Kong to pay $10 million for copyright
infringement.
www.InsuranceCommunityUniversity.com
.
22
BlackBerry vs. Research in Motion
 BlackBerry maker, Research in Motion,
said Friday that it agreed to pay $612.5
million to patent holding company NTP
to settle a long-running dispute that had
threatened to shut down the popular
wireless e-mail service for its 3 million
users.
www.InsuranceCommunityUniversity.com
.
23
BlackBerry vs. Research in Motion
Blackberry
Icon Patent Holder
Process(s) Patent
Holders
Case Manufacturer
Keyboard and button
technology
Sound Technology
www.InsuranceCommunityUniversity.com
.
Headphone
Technology
What is Intellectual Property?
www.InsuranceCommunityUniversity.com
.
Intellectual Property
 “In simple terms, intellectual property (IP) is the product
of the human intellect that has commercial value.” Patent,
Copyright & Trademark: Stephen Elias (www.nolo.com)
 IP can be in the form of an invention, process, chemical
formula or “idea” (patent); the written word such, as
books or songs; designs and art work (copyright); and
product names (trademark).
www.InsuranceCommunityUniversity.com
.
26
Intellectual Property
 If “intellectual property” were not protected by
law then the owner of the property would not
be able to control its use.
 The commercial value of intellectual property
comes from the ability of its owner to control
its use.
 Intellectual Property laws are designed to
define and protect various forms of IP.
www.InsuranceCommunityUniversity.com
.
27
Types of Intellectual Property (IP)





Trade Secret
Trademark
Trade Dress
Copyright
Patent
www.InsuranceCommunityUniversity.com
.
28
Trade Secrets
 Trade Secrets consists of a variety of original, inventive
ideas, information, material, formulas
 Trade Secrets are NOT known by others
(competitors/general public)
 Trade Secret must be maintained and guarded as a
“secret” (Coke formula/Kentucky Fried Chicken)
 Protection under Trade Secret is often how new ideas
(etc.) seek legal protection before qualification of other
forms of IP.
 Not subject to an expiration, such as a patent
www.InsuranceCommunityUniversity.com
.
29
Examples of Trade Secret Categories
•
•
•
•
•
•
Designs
Devices
Processes
Compositions
Techniques
Odor
•
•
•
•
•
•
Sounds
Formulas
Information
Recipes
Magic Tricks
Movie Plots
www.InsuranceCommunityUniversity.com
.
30
Trade Secret Business Examples
Customer Lists including Customers
Cost of Goods and Inventory Pricing
Information
Sources of Supply
Books and Records of the Business
Mailing Lists and Mailing Information
www.InsuranceCommunityUniversity.com
.
31
Could This Happen to Your Client?
(Blog)
 “Hi my name is Aden and this is my first post. I
am in a somewhat unusual intellectual
property issue and, though I have done a lot
of searching, I cannot find a direct answer to
one of my questions.”
http://answers.onstartups.com/questions/35008/transf
er-of-intellectual-property-due-to-use-of-a-businessequipment-australian
www.InsuranceCommunityUniversity.com
.
32
Could This Happen to Your Client?
 “Basically, I was doing work experience for an
organization (I was definitely not an employee) and I
created some software for another organization while
I was there.
 Recently the question of intellectual ownership of my
software has come up and the organization where I
originally created the software claims that they have
the right to take possession of the intellectual
property of my software.”
www.InsuranceCommunityUniversity.com
.
33
Could This Happen to Your Client?
 “Since then I have continued working on it
using my own equipment.
 As I was not an employee I don't believe they
can do this but they may claim that, because I
used their equipment, that they own what I
created.”
 Polling Question #3--What do YOU think?
www.InsuranceCommunityUniversity.com
.
34
Trademark
 A trademark is a brand name; logos; slogans; designs for
goods or services.
 A trademark or service mark includes any word, name,
symbol, device, or any combination, used or intended to
be used to identify and distinguish the goods/services of
one seller or provider from those of others, and to
indicate
the
source
of
the
goods/services.
(www.uspto.gov)
 A trademark may be distinctive or have become wellknown through long use or advertising.
www.InsuranceCommunityUniversity.com
.
35
Trade Dress
 Trade Dress is similar to Trademark.
 Trade Dress refers to the “Total Image of a
Product.” The aesthetics.
 Typically, when there is a lawsuit for violation
of intellectual property, both Trade Dress and
Trademark will be causes of action.
www.InsuranceCommunityUniversity.com
.
36
Symbols
®
• Registered trademark protected by
Federal Law
TM
• A trademark that is not federally
registered
SM
• A service mark is the same as a
trademark, except that it identifies and
distinguishes the source of a service
rather than a product.
©
• Copyright
www.InsuranceCommunityUniversity.com
.
37
Trademark Myths that can get you
in trouble (David W. Henry)
1.
2.
3.
4.
5.
I registered the corporate
name in my state
I checked with the state
trademark or fictitious
name agency
I registered the name as
an internet domain
name—its mine
I spell my name
differently
It’s my own name or
initials so it must be okay
1.
2.
3.
4.
5.
This is not a trademark
registration
Rights arise from usage not
filing—there are many
unregistered marks
Owning a domain name does
not automatically create
trademark rights in goods
Confusion can still be created
which is actionable
Not true
www.InsuranceCommunityUniversity.com
.
Copyright
 Protects a different type of creative expression;
an original artistic or literary work. It does not
protect an “idea” itself.
 Examples are works of:
•
•
•
•
•
•
authors
composers
artists
designers
programmers
web designers.
www.InsuranceCommunityUniversity.com
.
39
Copyright
 A copyright notice on a published work can be
noted by using the “copyright bug” and it does NOT
have to be registered in the U. S. Copyright Office “
©.”
 If the copyright is registered, it creates a legal
presumption that the copyright is valid and allows
the copyright owner to recover up to $l00,000
without proving any actual monetary harm.
www.InsuranceCommunityUniversity.com
.
40
Copyright
 A Copyright can last a very long time.
 As a result of the Copyright Extension Act of l998,
most copyrights for works published after
January l, l978 last for the life of the author plus
70 years.
 There are exceptions when the total life of the
copyright will last between 95 and l20 years
total.
www.InsuranceCommunityUniversity.com
.
41
Polling Question #4 & #5
www.InsuranceCommunityUniversity.com
.
 This website and its cartoons are registered with the U.S.
Copyright Office.
 The unauthorized reproduction or distribution of a
copyrighted work is illegal. Criminal copyright
infringement, including infringement without monetary
gain, is investigated by the FBI and is punishable by fines
and federal imprisonment.
www.InsuranceCommunityUniversity.com
.
Email
 Hi Laurie,
 Thank you for writing to me about my cartoons. It¹s great to hear
from you today!
 My cartoons are available at budget-friendly rates for meetings,
presentations, lectures, seminars and training sessions. You will
find thousands of cartoons to choose from on my site @
http://www.glasbergen.com, all sorted by topic for fast and easy
browsing...plus a keyword-search database to help you locate
exactly what you're looking for. Click on any thumbnail to see a
full size version of a cartoon, identified by a Cartoon ID code
number directly below the image.
www.InsuranceCommunityUniversity.com
.
44
Email
 Here are the rates and ordering information you
requested:
 * OPTION #1: My standard permission fee for
cartoons, used in PowerPoint, overheads or other
screen presentations, is $25 per cartoon for one-time
usage rights or $75 each for any cartoon to be used in
multiple or repeated presentations. (All fees are
quoted in U.S. Dollars for black and white artwork. A
full color version will be supplied at no additional
charge if available.)
www.InsuranceCommunityUniversity.com
.
Email
 OPTION #2: I can also arrange a very special annual
rate if you'd like unlimited use of any/all of my
cartoons in your presentations for one year. You will
have unlimited authorized access to a huge database
of cartoons from my web pages including the new
ones that appear as my cartoon of the day throughout
the year. With this special arrangement, there's no
need for last minute panicking...just download a few
cartoons whenever you need them! My permission
fee for this special unlimited access is $750 per
year...less than $15 per week!
www.InsuranceCommunityUniversity.com
.
Patent

A Patent gives the right to exclude others from making,
using, offering for sale or selling the invention throughout
the U.S. or importing the invention into the U.S.

A Patent must fall within the definition five “statutory”
classes in order to be patentable:





Processes,
Machines,
Manufactures (objects made by humans or machines),
Compositions of matter, and
New uses of any of the above.
www.InsuranceCommunityUniversity.com
.
47
Provisional Patent
 A “Provisional Application” for a patent is a
form of application filed in the USPTO under
35 U.S.C. §III.
 Provides a means to establish an early
effective filing date in a later filed non
provisional patent application filed under 35
U.S.C. §III.
www.InsuranceCommunityUniversity.com
.
Types of Patents
Utility
Patents
• Applies to new processes, machines,
manufactures, composition of matter, or new
uses of any of the above if they are novel,
“non-obvious” and useful.
• 20 years
Design
Patent
• Applies to unique and ornamental shapes or
designs that are also nonfunctional.
• 14 years
Plant
Patent
• May be issued for any asexually or sexually
reproducible plants (such as flowers) that are
both novel and “unobvious”.
• 20 years
www.InsuranceCommunityUniversity.com
.
49
Intellectual Property and
Liability Insurance
www.InsuranceCommunityUniversity.com
.
Intellectual Property Background
In no particular order, the three areas of liability
claims that seem to make carriers the most
unhappy (or suspicious) are:
1. Employment claims
2. Environmental claims
3. “Coverage B”-type claims- Intellectual
Property, false advertising, etc.)
www.InsuranceCommunityUniversity.com
.
51
Polling Question #6
www.InsuranceCommunityUniversity.com
.
Confusing Wine
 South Ducks winery is being sued by Duckhorn winery
because the South Duck’s wine label has a duck on it
and resembles the Duckhorn label.
 Duckhorn is demanding they remove their labels and
product from the market place and pay them for
damages from the potential loss of sales due to
confusion of the customer.
 Is this covered on the current Commercial General
Liability under Advertising Injury?
www.InsuranceCommunityUniversity.com
.
Look The Same—don’t They?
www.InsuranceCommunityUniversity.com
.
Insurance Issues
 Up until the CGL changed language in its 1998
edition, coverage for some Intellectual
Property defense claims was afforded under
the Advertising Injury coverage for other than
Patent Infringement cases.
 It is implicit for coverage to apply that the
goods, services, etc. be advertised in order for
coverage to apply.
www.InsuranceCommunityUniversity.com
.
55
Insurance Issues
 Most plaintiffs wait until the product has
actually been advertised before filing a cause of
action.
 There is more economic benefit to sue for
infringement when the product is established
and making money.
 There would be measurable damages at the
point the product has market share.
www.InsuranceCommunityUniversity.com
.
56
CGL Form Changes and IP
1973 and prior
1986-1996
1998 and forward
Piracy/Unfair
Competition
Misappropriation of
advertising ideas and
style of doing business
The use of another’s
advertising idea in
“your advertisement”
Adolpho House Distributing Corp v.
Travelers Property and Casualty Ins.
Co., 2001 U. S. Dist. (LEXIS 25589 (S.
D. Fla. 2001)
Infringement of
copyright, title, or
slogan
Infringement of
copyright, title, or
slogan
www.InsuranceCommunityUniversity.com
.
Infringing upon
another’s copyright,
trade dress or slogan in
“your advertisement”.
Advertising Injury definition in
the 1996 CGL
“Advertising injury” means injury arising out of
one or more of the following offenses:
1. Oral or written publication of material that slanders or
libels a person or organization or disparages a
person’s or organization’s goods, products or services;
2. Oral or written publication of material that violates a
person’s right of privacy;
www.InsuranceCommunityUniversity.com
.
58
Advertising Injury Definition in
the 1996 CGL
3. Misappropriation of advertising ideas or style
of doing business; or
4. Infringement of copyright, title or slogan.
NOTE: There is NO definition of “advertisement” in
the prior form.
www.InsuranceCommunityUniversity.com
.
59
Advertising Injury definition in
the 1998 CGL
14. “Personal and advertising injury” means injury, including
consequential “bodily injury,” arising out of one or more
of the following offenses.
d. Oral or written publication of material that slanders
or libels a person or organization or disparages a
person’s or organization’s goods, products or
services;
e. Oral or written publication of material that violates a
person’s right of privacy;
www.InsuranceCommunityUniversity.com
.
60
Advertising Injury definition in
the 1998 CGL
f. The use of another’s advertising idea in
your “advertisement”; or
g. Infringing upon another’s copyright,
trade dress or slogan in your
advertisement.”
www.InsuranceCommunityUniversity.com
.
61
Advertising Injury definition in
the 1998 CGL
1. “Advertisement” means a notice that is
broadcast or published to the general public
or specific market segments about your
goods, products or services for the purpose of
attracting customers or supporters.
www.InsuranceCommunityUniversity.com
.
62
Advertising Liability
 By the inclusion of the word and definition of
“advertisement” the CGL eliminated most
categories of what is provided in an Intellectual
Property Defense policy.
 The CGL never had coverage for offense.
 The CGL never “intended” to have ANY coverage
for Patents.
www.InsuranceCommunityUniversity.com
.
63
Intellectual Property
Law and Insurance
www.InsuranceCommunityUniversity.com
.
64
Intellectual Property Legal Issues







Willful Infringement vs. Passive Infringement
Contributory Infringer—Vicarious Infringer
Unfair Competition
Confusion of Customer
Counterfeit Mark
Dilution of Mark
Palming Off
www.InsuranceCommunityUniversity.com
.
65
Intellectual Property and
Cyberspace Issues
 Domain Name
 Intellectual Property
• Patent
• Trademark/Trade dress
• Copyright
 Linking/Framing
www.InsuranceCommunityUniversity.com
.
66
Intellectual Property & Cyberspace
Issues
 Domain Names.
• Unauthorized use of a Trademark or
Service Mark.
• Likelihood of confusion as to the origin,
affiliation or sponsorship of a product.
www.InsuranceCommunityUniversity.com
.
67
Cyberspace Copyright Issues
 U. S. Copyright Law protects the expression of original
works of authorship fixed in a tangible medium of
expression.
 Software falls within this category, even when not
stored on a disk.
 Congress amended the l976 Copyright Act in l980 to
provide that software be treated as a “literary work.”
www.InsuranceCommunityUniversity.com
.
68
Cyberspace Copyright Issues
Linking/Framing as Cyberspace concerns:
• The insured links to or allow another party to
link to insured’s web site.
• Potential exposure to infringement issues
related to the other party.
• Whether actual or alleged- your insured will
be named in the lawsuit.
www.InsuranceCommunityUniversity.com
.
69
Cyberspace Copyright Issues
Unauthorized Use of a Trademark or Service
Mark:
• Must show a protectable mark
• Likelihood of confusion as to the origin,
affiliation or sponsorship of a product
www.InsuranceCommunityUniversity.com
.
70
Cyberspace Patent Issues
 The most frequent source of patent litigation
today as respects the internet is the Utility
Patent (new and innovative use of the internet).
www.InsuranceCommunityUniversity.com
.
71
Intellectual Property Insurance
A Logical and Economical Business Decision
Intellectual Property
“People recognize intellectual property the same way they recognize real estate.
People understand what property is. But it’s a new kind of property, and so the
understanding uses new control surfaces. It uses a new way of defining property.”
Michael Nesmith
Source: “Michael Nesmith.” BrainyQuote.com. Xplore Inc., 2012.
http://www.brainyquote.com/quotes/quotes/m/michaelness264047.html
www.InsuranceCommunityUniversity.com
.
Intellectual Property Insurance
 Written as a separate coverage by limited
property/casualty companies.
 It is written often by specialty companies
such as Intellectual Property Insurance
Services Corporation
www.patentinsurance.com
www.InsuranceCommunityUniversity.com
.
73
Intellectual Property
 Intellectual Property (IP) can be a company’s most
important asset and is what controls market share.
 Many companies may not realize how vulnerable they are
to other companies “stealing” their ideas/inventions and
unfairly competing with them for market share.
 Just having IP rights is not enough- companies must be
able to protect them by:
• Defending products and/or services against charges of IP
infringement; or
• Enforcing IP rights against infringers
www.InsuranceCommunityUniversity.com
.
74
Polling Question #7
www.InsuranceCommunityUniversity.com
.
Intellectual Property
 IP litigation is very expensive as a defendant or as
a plaintiff.
 IP lawsuits are very complex and require litigation
attorneys with specialized IP-specific knowledge.
 IP insurance is available to defend against charges
of IP infringement and to enforce IP rights against
infringers.
www.InsuranceCommunityUniversity.com
.
76
Average IP Litigation Costs
*Costs exclude judgments and damages awarded.
www.InsuranceCommunityUniversity.com
.
77
Median damages (in MM)
Patent Holder Median Damages
Awarded
PriceWaterhouseCoopers, 2012 Patent Litigation Study
www.InsuranceCommunityUniversity.com
.
78
Lawsuit Frequency
www.InsuranceCommunityUniversity.com
.
79
Non-Practicing Entities (NPEs) a.k.a.
Patent Trolls rake in Damages Awarded
www.InsuranceCommunityUniversity.com
.
80
2012 U.S. Commerce Study on
Intellectual Property & Jobs
Intellectual Property intensive industries:
 Have a significant impact on US economy and jobs
creation
 Support at least 40 Million jobs to US economy
 Contribute $5 Trillion to the U.S. GDP
 Support 35% of US economy
www.InsuranceCommunityUniversity.com
.
81
2012 U.S. Commerce Study on
Intellectual Property & Jobs
Bottom line… “virtually every U.S. industry” relies on
intellectual property protections, either directly or
indirectly, Deputy Commerce Secretary Rebecca Blank
said. “Clearly, making sure we adequately protect
intellectual property is vital to maintaining America’s
competitive edge and driving our overall prosperity.”
http://www.uspto.gov/news/publications/IP_Report_March_2012.pdf
Source: InsuranceJournal.com, April 12, 2012
www.InsuranceCommunityUniversity.com
.
82
Elements of IP Insurance
Products
Manufactured
Triggers
Lawsuit
www.InsuranceCommunityUniversity.com
.
Unexpected
Risk
83
Elements of a Bond
Company elects
to manufacture
IP owner elects
to sue
www.InsuranceCommunityUniversity.com
.
Moral
Risk
84
IP Abatement Insurance
A unique insurance solution
www.InsuranceCommunityUniversity.com
.
IP Abatement Insurance:
True Blended Coverage
www.InsuranceCommunityUniversity.com
.
IP Abatement Insurance:
True Blended Coverage
Elements of IP Abatement Insurance
Event of a
Loss
Pure
Insurance
Event of a Win
Blended
Coverage
www.InsuranceCommunityUniversity.com
.
IP Abatement Insurance:
True Blended Coverage
Key Elements:
 Economic Benefit, when a lawsuit is won or settled favorably (relief
from repayment of up to $100K of non-monetary, realized Economic
Benefit)
 Pre-existing commercial activity, whether known or unknown, is
excluded from coverage
 Favorable Opinion, at the time of a claim, a 3rd party favorable
opinion from counsel is generally required

Early Intervention Letters, a courtesy to policyholders (up to 10
letters allowed per policy term)
www.InsuranceCommunityUniversity.com
.
Impact of IP Abatement Insurance
on Patent Value
An insured patent is more valuable
 Undergone thorough due diligence on validity and
enforceability
 Signals that a 3rd party will assume much of the
financial risk of enforcing the IP
 Validates patent value, validity and enforceability
IP Insurance: A Logical and Economical Business Decision © 2012 -2013 Intellectual Property Insurance Services Corporation
www.patentinsurance.com | 800.537.7863
www.InsuranceCommunityUniversity.com
.
InventPro Abatement Insurance
®
www.InsuranceCommunityUniversity.com
.
InventPro Abatement Insurance*
®
InventPro® Abatement insurance is designed to help enforce the
policyholder’s IP rights against infringers who are often larger and better
equipped financially to withstand costly IP litigation. The InventPro®
program offers an affordable insurance policy specifically for
accommodating inventors and small companies.
Coverage:

Limits: $100K; $250K; $500K (USD) per Claim/Aggregate

Limited to 3 Patents and/or Trademarks

Worldwide Territory may be available for additional premium

Terms up to 3 years

Multi-Peril Intellectual Property Insurance Limits: 10% of Policy limits offered by
some insurance carriers

Claims Made & Reported

*offered by select insurance carriers only
www.InsuranceCommunityUniversity.com
.
InventPro Abatement Insurance
®
Key Elements:

Other Products: Available for insuring in excess of 3 scheduled IP, increased
limits and circumstances or industries otherwise excluded under this program

Choice of Litigating Counsel endorsement: Required under the terms of this
Policy

Economic Benefit, when a lawsuit is won or settled favorably (relief from
repayment of up to $50K of non-monetary, realized Economic Benefit)

Pre-existing commercial activity, whether known or unknown, is excluded from
coverage

Favorable Opinion, at the time of a claim, a 3rd party favorable opinion from
counsel is required
Early Intervention Letters, a courtesy to policyholders (up to 5 letters allowed
per policy term)
Program Exclusions: Software and Website industries


www.InsuranceCommunityUniversity.com
.
IP Abatement Claim:
Medical Device Industry
 The policy holder purchased a policy for a pending patent.
 Before the patent issued, a large competitor began
producing an infringing product.
 Once the patent issued, the policy holder was able to
pursue the alleged infringer and assert their patent rights.
 Without an insurance policy providing the funds to enforce
their rights, the policy holder would have:
 continued to lose market share,
 gone out of business, or
 lost a high percentage of their market share
www.InsuranceCommunityUniversity.com
.
IP Abatement Claim:
Pet Products Industry
 The policy holder, a small company, used the policy to
enforce their patents, trademarks and copyrights.
 A much larger, industry competitor copied its pet
grooming product and infomercial.
 The policy holder filed suit. When the large company
learned of the insurance, a favorable settlement was
reached upon terms that are confidential.
www.InsuranceCommunityUniversity.com
.
IP Abatement Claim:
Manufacturing Industry


The policy holder pursued multiple parties, including
the manufacturer of infringing product who ended
production and negotiated license agreements with
multiple former purchasers.
This policy holder used the same policy three times
to go after multiple infringers.


Once one suit was settled, they paid back the amount of the
policy used to the carrier, which reinstated the policy
limits.
Once limits were reinstated, they pursued
another
infringer.
www.InsuranceCommunityUniversity.com
.
IP Defense Insurance
The solution to the gap left in CGL policy coverage IP risks
www.InsuranceCommunityUniversity.com
.
IP Defense Insurance:
Bridges the gap left by the GL policy
www.InsuranceCommunityUniversity.com
.
IP Defense Insurance:
Bridges the gap left by the GL policy
www.InsuranceCommunityUniversity.com
.
IP Defense Claim:
Electronic Security Industry




A leader in the electronic security industry was successfully
defeated in the favorable plaintiff venue in the Eastern District
of Texas by the policy holder.
If the policy holder would have lost, they could have easily
been put out of business. Fortunately, the money was
available to fund a successful defense.
The policy holder was quoted as saying, “You never know
when you will need insurance.”
It was the first verdict for a defendant out of the past 20 cases
tried and decided in this district.
www.InsuranceCommunityUniversity.com
.
IP Defense Claim Scenario:
Retail Industry

A manufacturer/distributor of shoes was accused of
infringement by a non-practicing entity (NPE) a.k.a ‘patent troll’

The NPEs had successfully enforced their patents against smaller,
less-funded manufacturers, forcing them into signing license
agreements and paying royalties.

Unlike the other small manufacturers that were forced to give up
their rights to manufacture, the policy holder used the power of
the Defense policy to fight the weak allegation.

Simply holding a Defense policy can ward off frivolous lawsuits.
www.InsuranceCommunityUniversity.com
.
IP Insurance: Benefits
www.InsuranceCommunityUniversity.com
.
Multi-Peril Insurance:
First Party Coverage
www.InsuranceCommunityUniversity.com
.
Multi-Peril Insurance:
First Party Coverage
www.InsuranceCommunityUniversity.com
.
Unauthorized Disclosure Insurance:
www.InsuranceCommunityUniversity.com
.
Unauthorized Disclosure Insurance:
An Example of how an
Unauthorized Disclosure policy may work
Unauthorized Disclosure by:
Coverage Type
Willful Disclosure Involved?
Associated 3rd partyincluding employee
Blended Coverage
No
Named policy holder
Pure Insurance
No
Employee or Associated
3rd party
Pure Insurance
No
Employee- (Willful)
Pure Insurance
Yes: < 3 yrs. post hire date &
> 1 yr. post disclosure
Employee- (Willful)
Bond
Yes: > 3 yrs. post hire date &
> 1 year post disclosure
Associated 3rd party
Bond
Yes: > 1 year post disclosure
(Party Type)
www.InsuranceCommunityUniversity.com
.
Case Distribution: Top 10 Industries
(1995-2010)
20%
Top 10 industries decided based on nature of the technology of subject patent
18%
16%
PriceWaterhouseCoopers, 2011 Patent Litigation Study
14%
12%
10%
8%
6%
4%
2%
0%
www.InsuranceCommunityUniversity.com
.
Top 10 Decisions by Industry
15 Yr. %
Overall
Increase
Overall
Rank
Industry
1995-2000
Number of
Cases
2001-2005
Number of Cases
2006-2010
Number of
Cases
19952010
Total
Cases
1
Consumer Products
82
80
121
283
48%
2
Biotechnology/Pharma
40
71
89
200
123%
3
Industrial/Construction
66
57
70
193
6%
4
Medical Devices
42
45
67
154
60%
5
Computer Hardware/Electronics
24
32
92
148
283%
6
Business/Consumer Services
19
33
58
110
205%
7
Software
15
23
52
90
247%
8
Chemicals/Synthetic Materials
31
16
32
79
3%
9
Automotive/Transportation
24
25
29
78
21%
10
Telecomm.
14
22
38
74
171%
PriceWaterhouseCoopers, 2011 Patent Litigation Study
www.InsuranceCommunityUniversity.com
.
When to be thinking about IP
insurance
www.InsuranceCommunityUniversity.com
.
When to be thinking about IP
insurance
www.InsuranceCommunityUniversity.com
.
When to be thinking about IP
insurance
www.InsuranceCommunityUniversity.com
.
Assessing IP Risk
 Does the company have pending or issued patents, trademarks or copyrights?
 Does the company own trade secrets; or, are they charged with safeguarding a
third party’s confidential information?
 Does the company have sought-after technology on products and/or
processes?
 How competitive is the market in which they operate, and what is their
market share?
 Is the company concerned about being sued for infringement or suing another
for infringing their IP?
 Does the company have any current defensive coverage under an existing
general liability or business owner’s policy for patent, trademark or copyright
infringement; or, do they think they may have coverage?
 Can your company afford to self-insure an intellectual property lawsuit?
www.InsuranceCommunityUniversity.com
.
Assessing IP Risk
 Does the company have a risk management strategy for their intellectual
property; if so, what is it?
 Does the company have a contractual obligation to indemnify against IP
infringement; if so, are they required to insure the indemnification?
 Is the company prepared to license their products, processes and/or
their intellectual property?
 Does the company have a recovery plan in the event of the loss of an IP
lawsuit?
 Is the company concerned about patent trolls or grasshopper-induced
litigation?
 Is there a pending sale, merger and/or acquisition in the company’s
future; if so, are the decision-makers aware that IP policies may be
transferrable and/or assigned to the purchaser? (Multi-year policies are
available to assist in these transactions.)
www.InsuranceCommunityUniversity.com
.
To obtain premium indications
and/or to complete an application,
or, if you have questions, please
contact:
IPISC
Janet Zahnd, Sales/Marketing Manager
jzahnd@patentinsurance.com
502-855-5314
www.InsuranceCommunityUniversity.com
.
Upcoming Classes
Upcoming University/Paid CE FREE to University Members
Classes
$50.00/charge for non university members
6/18
Umbrellas & Excess
6/20
Real Estate Lease Issues and Concerns
7/9
Insight on Insurance Proposals and
Submissions
Upcoming Community Classes FREE to University Members
$25.00/charge for non university members
6/25
MAP 21 – Statutory Exemptions to the
Federal Motor Carrier Safety Regulations
Join the University TODAY. www.insurancecommunitycenter.com
Click Join University at the top of the bar
www.InsuranceCommunityUniversity.com
.
114