Transactional Intellectual Property: From Startups to Public Companies

Transactional Intellectual Property: From Startups to Public Companies, Fourth Edition, is the successor to Intellectual Property in Business Organizations: Cases and Materials. This transactional, problem-based casebook focuses on the legal issues and opportunities confronting businesses that develop and utilize intellectual property (IP). It calls on students to analyze and help resolve typical IP-based issues encountered as businesses engaged in creative enterprises are founded, financed, expanded, transferred to others, or terminated.

The text is designed for law students in advanced classes concerning IP, technology transfer and licensing, business organizations issues as encountered in IP-based companies, and the law of science and technology. It is also suitable for engineering students seeking training in IP development and surrounding business considerations, as well as for business students in courses focusing on the legal problems of developing businesses. To aid students lacking a prior IP background, the text includes extensive background materials on important intellectual property standards.

This casebook considers IP-based business problems at three key phases in the life of a creative concern:

• The startup phase (when IP often plays key roles in business formation and venture capital financing);
• The mid-life phase (when IP is often an important factor in going public or selling a business through a merger into a larger concern); and
• The mature company phase (when successful firms must deal with problems such as preventing abuses of dominant IP positions and remaining competitive in complex high-tech markets despite being innovators in only small components of those markets).

The updates in the fourth edition of the text respond to many important legal developments in this fast-moving area. New materials in the fourth edition include coverage of:

• Additions to federal trade secret laws supplementing existing state law protections;
• Developing Supreme Court caselaw balancing and interrelating IP protections with antitrust laws governing commerce restrictions;
• New SEC standards for crowdsourcing of investments in IP-based businesses;
• Employment standards and dynamics underlying the alleged theft of trade secrets by Uber from Waymo (the successor to Google's self-driving car project);
• Licensing of standard essential patents (SEPs) on fair, reasonable, and non-discriminatory (FRAND) terms and the factors employed in determining FRAND licensing royalties;
• Changes in the liquidity of marketplaces for transfers of IP interests such as IP auctions;
• Assessments of Tesla's release of its patent rights as a means to spur development of further technologies in the electric vehicle field;
• Promises by Microsoft to use its IP rights to protect customers of the company's cloud services;
• Practices of defensive patent aggregators that acquire pools of patents to prevent other parties from using the patents for aggressive patent infringement litigation; and
• The latest Supreme Court descriptions of actions exhausting patent rights, along with evaluations of the limits on IP-mediated business practices resulting from such exhaustion.

The new edition also incorporates numerous notes and comments updating and supplementing the topics addressed in the prior editions.

Richard Gruner is a Lecturer in Law at the USC Gould School of Law.

Shubha Ghosh is Crandall Melvin Professor of Law & Director, Intellectual Property Law Institute at the Syracuse University College of Law.

Jay Kesan is a patent attorney who was a Professor of Law at University of Illinois College of Law for many years.