Technical development projects include many significant challenges that must be effectively met by the project manager in order to place the manager’s team in a position to realize project success.   At a minimum, successful project managers need to effectively: lead people and processes, deliver on tight project development and testing deadlines, and provide technical solutions that meet the quality and performance targets established by the company.  Commercial acceptance of the technical solution serves as confirmation of the project’s success. 

However, the project’s associated interpersonal and technical challenges could have been met and commercial success realized and yet the overall success of the project could be placed at risk if one critical responsibility of the project manager is overlooked – protecting the company’s developed intellectual property (IP).  IP includes the intangible, valuable assets such as inventions, developed during the project.  Not protecting the company’s IP could mean that third party competitors would be able to make, use and sell the technical solution including the developed IP without recourse by the company.

During the presentation Michael looks forward to providing you with common IP pitfalls and best practices for avoiding the pitfalls, as well as guidance on the attributes and best practices implemented by a high-performing strategic IP teams to effectively identify and protect the company’s IP while avoiding the infringement of third party IP rights. Protecting IP can be quite expensive so we will also provide tools and techniques for developing and managing IP budgets.  

Attending this presentation will give you the tools that, when applied will help develop accurate IP budgets, and reduce the likelihood that IP issues will be overlooked.

Learning Objectives

1. What steps should project managers (PM’s) take to ensure rights to all intellectual property (IP) developed during the project, by employees, third-party consultants or physicians, are owned by the desired entity ?
2. How can a PM greatly reduce the risk of loss of IP rights associated with the developed technology as a result of the technology’s public disclosure ?
3. What are the attributes of a global IP portfolio development program that facilitates: timely invention capture, thorough patentability assessments and the effective development of high quality, strategic IP assets protecting the project-developed IP, and also minimizes the risk of infringement of third parties’ IP rights ?
4. What are the cost drivers and spend horizon that should be considered when constructing a budget for developing an IP portfolio, and what tools and data can PM’s leverage to accurately and predictably build and manage the IP budget.

 

Michael M. Gnibus is a partner in Armstrong Teasdale’s Intellectual Property practice group, Michael Gnibus has substantial experience preparing and prosecuting patents for a variety of industries and global markets., and developing strategies  for protecting intellectual property.

Before  going to law school, Mike worked as a project engineer for Ingersoll-Rand Company, and as a CAD/CAM Consultant for McDonnell Douglas.

In attorney and leadership roles  at  General Electric,  Ingersoll Rand, and LORD Corporation  Mike  worked as a partner to the company technical development teams and helped the teams develop IP protection strategies consistent with the developed technology and  that maximized the commercial impact potential of their IP assets.

He worked with management teams, engineering, marketing and others to review inventions and implement strategies to protect technology.

As part of the IP team, Mike translated client requests and assignments into a streamlined project plan. By monitoring project milestones and key performance indicators he was able to provide sound legal advice for scoping and maintaining each company’s IP to ultimately realize the strategic goals of its products. 

Normal registration: 

• $0.00 - PMINJ Chapter members (fee waived for this meeting)
• The link to the virtual meeting will be included in the Registration Receipt
• Download the Zoom app at: https://zoom.us/download