Application

Intro

 

Application Intro

APPLICATION FOR ASSET-BACKED
INTELLECTUAL PROPERTY INSURANCE

INTELLECTUAL PROPERTY INFRINGEMENT
ABATEMENT INSURANCE

And:

INTELLECTUAL PROPERTY INFRINGEMENT
DEFENSE COST (W/DAMAGES) REIMBURSEMENT
INSURANCE

The Asset-Backed Intellectual Property Insurance Policy pays to the Named Insured NON-COMPENSATED LOSS resulting from the loss of INTELLECTUAL PROPERTY LOAN VALUE (as is specified on the Declarations Page), which loss is directly caused by an INTELLECTUAL PROPERTY LOAN DEFAULT involving PLEDGED INTELLECTUAL PROPERTY, i.e. COVERED INTELLECTUAL PROPERTY or MANUFACTURED PRODUCTS/PROJECTS, MARKS AND WORKS.

The Intellectual Property Infringement Abatement (Enforcement)
Insurance Policy reimburses you for your LITIGATION EXPENSES should youelect to enforce your PATENT, TRADEMARK OR COPYRIGHT rights (depending upon the coverage taken) against an alleged infringer. The Policy responds to infringement enforcement of your Insured Intellectual Property (as described below) which are listed and/or described on the Declarations Page of your Policy. The Intellectual Property Infringement Defense Cost Reimbursement Insurance Policy reimburses you for your litigation expenses should you be sued by another for infringement of their patent, trademark or copyright (depending upon the coverage taken). The policy responds to charges of infringement involving your Manufactured Products, Marks and Works of Authorship which are listed and/or described on the Schedule of Insured Manufactured Products issued with the Declarations Page of your Policy.

Useful Definitions

CIVIL PROCEEDING(S) means any legal or administrative proceeding, suit, cause of action or alternative dispute resolution proceeding or the threat thereof, including but not limited to, cease and desist letter(s) and the like, directed to or brought against the Named Insured by one or more parties, where applicable, in a State Court, a Federal District Court or United States Appellate Court, or if an alternative dispute resolution, in a proper forum.

The Company agrees to use all information provided hereon and herewith solely for evaluating the feasibility of issuing the above described insurance policies.

COVERED PRODUCT(S) (also “Covered Product(s)”) means any process, machine, article of manufacture or composition owned, licensed or controlled by applicant that has one or more feature(s) described and claimed by one or more Pledged IP.

PLEDGED INTELLECTUAL PROPERTY (also “Pledged IP”) means any unexpired patent(s), listed on form AB-PA or an attachment thereto, all of which the Applicant represents to the best of its knowledge and belief were legally and/or are being legally procured and as to which the Applicant warrants it has no knowledge of any facts or circumstances adversely affecting their validity. No revisions, modifications, continuations, continuations-in-part, divisions, extensions, renewals, reissues, or the like of any patent, is included in the PLEDGED INTELLECTUAL PROPERTY unless specifically enumerated. PRINCIPAL IN INTEREST (also “Principal in Interest”) means the entity(ies) actually engaged in the making, use, sale or offer for sale of MPMW or the entity(ies) in whom or in which the rights conferred by the Pledged IP are vested.

NOTE: PLEASE ANSWER ALL QUESTIONS IN DETAIL AND ATTACH ADDITIONAL SHEETS AS NECESSARY.

In completing this application, applicant understands that the information provided in answer to the questions is not privileged. This document and/or its contents may be required to be disclosed during litigation or as a result of statutory or regulatory action.

Instructions

  • This application comprises several forms which are listed and briefly described below. The application is not complete until each form, and the requisite number of each form, is complete and delivered to IPISC.
  • If the space provided is insufficient, you must use a separate sheet. Refer to the additional documents at the appropriate question.
  • If you are a financial institution, answer the question where given a choice, (your/their) with information about the principal in interest.
  • While these instructions have been written to anticipate questions which might arise, contact your agent if any question is unclear.
  • You must sign and date each and every section of this application.

Introduction and Instructions:

This document provides definitions and guidance for the completion of the application.

  • Read this document carefully
  • Complete the checklist
  •  List any additional attached documents in the space provided
  •  Contact your agent, broker or a representative of IPISC if any questions arise.

ABIPI APPLICATION FORM

This form requests basic information about the applicant.

A business plan is requested which details the use of the funds.

  1. Basic contact information for the applicant.
  2. Basic contact information for an individual who can be contacted by the underwriter, who has knowledge of the Pledged IP and Covered Products, and who can answer  question related to this application.
  3. This section relates to information about the Principal in Interest.
    • If the person filling out the form is not the Principal in Interest, fill out the shaded area with contact  information for the Principal in Interest.
  4. This section relates to the business practices that make use of the Pledged IP and which are related to the Covered Products.
    • A separate document is required to answer  this question. This document is referred to as the “Business Plan”.
    • A general descriptor of the business area or a set of keywords related to the business.
    • The number of groupings of products as perceived by the Principal in Interest.
    • The total should include covered products as well as  products not related to this application.
    • If exact numbers are not available, the highest and  best estimate will suffice.
    • If the Pledged IP or Covered Products were acquired in a merger or acquisition, provide details in the Business Plan.

Patent Disclosure Form:

On this form, you will list the IP to be pledged as collateral (the “Pledged IP”) and provide information about each item. Be advised that IP can only be pledged if the applicant is the sole assignee/owner of the IP.

  1. This list should include the patents which are being pledged as collateral. If more space is needed, use a separate sheet  to answer.
    • This form requires a separate document. This document should provide a brief explanation of the novel feature or features claimed in each patent listed. This document is referred to as “Patent Novelty.”
    • Licensed to Other: Check this box if you have assigned any rights to the patent whatsoever to another party and provide details of those rights in the Patent Novelty document.
    • Litigated: Check this box if the patent has ever been involved in litigation, whether the applicant was involved in the litigation or not. If checked, provide details in the Patent Novelty document.
    • Reexam/Reissue: Check this box if the patent has ever been the subject of a reexamination or reissue request, regardless of whether or not the request was granted. If checked, provide details in the Patent Novelty document.
    • Hatch Waxman: Check this box if the patent has been involved in a Hatch Waxman proceeding or if the claimed invention requires filing an abbreviated or new drug application (ANDA or NDA) with the FDA under the Hatch Waxman Act. If checked, provide details in the Patent Novelty document.
  2. The questions in this section relate to any and all patents listed in section
  3. If details are required, identify the patent and provide those details in the Patent Novelty document.
    • This includes inquiries about licenses that do not  contain a specific request.
    • Details should include whether or not the license is exclusive.
    • This question is in regard to specific knowledge with or without evidence.
    • This includes, but is not limited to, personal knowledge or suspicions and unsupported rumors.
    • This question is in regard to specific knowledge with  or without evidence.
    • If the applicant only has partial rights to the patent,  provide details including the names of the other rights  holders.
    • This includes any unsolicited offer of a license.

Financial Disclosure Form

This form requests that you include financial statements for the past five (5) years and provides space to enter values and estimates for line items not appearing in the included financial statements.

  1. This section requests information regarding the financials of  the applicant.
    • A separate document is required to answer this question.
    • To properly value the Pledged IP, certain line items must be provided. If those items are not specifically included  in the attached financial statements, you must include values for those items in this table.
  2. This section requests information about the applicant’s current notes payable. If space in insufficient, use a  separate sheet to answer.

Product Disclosure Form

In order to evaluate the Pledged IP, it is critical for IPISC to have a clear understanding of the products which are covered by the IP. You must fill out one copy of this form for each product covered by the Pledged IP.

    1. General technical, market and sales information about the Covered Product.
      • Name or model number of the product.
        • Current – refers to products which are currently on sale.
        • Anticipated – refers to products which still require development, but will be for sale.
        • Speculated – refers to products which are not in active development, but are seen as potential avenues for expansion in the future.
    2. Include the name of the Covered Product at the top of each page of this form.
    3. Who are the primary decision makers who purchase the Covered Product.
    4. Time from first sale to current date or expected time from current date to first sale.
    5. An estimate of this cost is sufficient.
    6. Rough estimate of this percentage is sufficient.
    7. This includes cost of parts, labor, overhead and marketing. An estimate is sufficient.
    8. Include as many as are applicable.
    9. If the Covered Product is complex and has many parts and many manufacturers, answer with respect to a majority of the Covered Product.
    10. Check all that apply.A complete understanding of the

Covered Product is vital to the valuation of the Pledged IP. Provide as much detail as possible to enable a reviewer to understand the function and novelty of the covered  products. If available, provide schematics, flowcharts, engineering diagrams and any other informative material.

  1. This section requests details about the market environment. Reasonable estimates for market size and target market share are sufficient.
  2. This section requests details about the Applicant’s IP practices with respect to the Covered Product only.
  3. This section requests information about all patents which claim features found in the Covered Product, regardless of whether or not the patents are owned by the applicant or are being pledged as collateral.
    • Patent/Applications Number: If the application has not been given an application number or has not published, you must provide a copy of the application.
    •  Owned: Check this box if the applicant has been assigned ownership rights (full or partial) to the listed IP.
    •  Licensed: Check if the applicant has licensed the patent from another.
    • % Product Revenue: This is an estimate based on the applicant’s understanding of the product and the market.
    • Filing Date/Issue Date: important dates for the listed patent/application.
    • Licensed to Other: Check this box if the patent has been licensed to another party. If the applicant does not own the patent, then answer to the best of applicant’s knowledge.
  4. This section requests data regarding sales and projected sales of the Covered Product.
    • If the product is now on sale, fill in sales data for the current year (row marked “Current”) and the two previous years (if  sales data is available), and provide reasonable projections for the next two years. If the product is not yet on sale, provide reasonable projections for the first three years of sales (starting with the row marked “First Sale”). Number of Units Sold: If sales data for the Covered Product is best expressed in number of units sold. Price per Unit:Average expected price per unit sold. Projected net sales: If the nature of the Covered Product is such that sales revenue is not accurately represented by Number of Units Sold, or if net sales data are more readily available, use this column.
    • Provide a brief description of the issues as understood by the applicant.