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Steve Tsai

 

About Us

We are an innovative Southern California business and intellectual property law and litigation firm dedicated to meeting our clients' individual needs through focused, effective, cost-efficient legal counsel. Our strategic geographical location and Mandarin speaking staff give us an added advantage in serving the diverse legal needs of businesses at each center of the vibrant Pacific Rim Business Triangle: US, China and Taiwan.

 

Why Us?

We believe legal services should be simple for our clients: our client's success is our success. For us, this means meeting our client's legal needs where it matters to them. We pride ourselves on our creativity, results and client-centered lawyering.

 

 


 

 

Steve has provided us with excellent representation in our patent and trademark matters for seven years. He truly knows our needs. He is very thorough and well reasoned in his advice. We have found him and his work to be of the highest integrity, and what's also nice is he's easy to work with.

S. P., Manager, Appliances Distributor, Los Angeles County

I've known Steve for ten years. The in-depth knowledge, keen attention to detail, creativity and care he displays sets him apart from other attorneys. And the results speak for themselves. He makes the effort to walk the client through a solution concisely and thoroughly, to put the client in control of the situation. For a large, multi-national corporation like us, superb, reliable legal representation is a fact of life. I have the highest regard for Steve.

-M. P., Legal Director, CA Distributor Subsidiary of Taiwan Multi-National TV & Display Monitor Manufacturer


 

Practice Areas:

We handle a wide range of business and intellectual property law and litigation matters. They range from setting up a business to negotiating complex commercial real estate transactions, sales of businesses and assets, and patent, trademark and copyright licenses; to prosecuting and defending breach of warranty, breach of fiduciary duty, fraud, unfair competition, patent, trademark, trade dress and copyright infringement, trade secret theft and other actions.


 


Business & Intellectual Property Litigation

Our work in this area includes prosecuting and defending patent, trademark, trade dress and copyright infringement, trade secret misappropriation, unfair competition, trade libel, products liability, corporate, partnership, joint venture, breach of contract, employment discrimination, wrongful termination, wage and hour, fraud, negligence, breach of fiduciary duty, real estate foreclosure, breach of warranty and bankruptcy adversary proceeding actions. We try cases before judges, juries and arbitrators, engage in mediations and appear in administrative agency proceedings. We routinely obtain temporary restraining orders, preliminary injunctions, and pre-judgment writs of attachment and possession.

 

Intellectual Property Law

It was more than sixteen years ago when Steve Tsai immersed himself in a multi-million dollar lawsuit against his client, a Silicon Valley Microsoft licensee, brought by Microsoft for trademark and copyright infringement and unfair competition, among other claims, and which the licensee countered with claims for anti-trust violations associated with Microsoft's Windows and DOS bundling practices at the time. Today, Mr. Tsai is even more entrenched in these and other areas of intellectual property law and litigation.

Our work in this area includes patent, copyright, trademark and trade dress protection, registration, licensing; rendering infringement and validity opinions; recording federally registered copyrights and trademarks with Customs; reporting infringers to Customs; defending against Customs seizures of allegedly infringing products; conducting intellectual property due diligence in corporate mergers and acquisitions; trademark monitoring; trademark searches and availability opinions; web domain name protection and dispute resolution; trade secret protection and licensing; unfair competition prevention; and resolving internet law, privacy, advertising issues.

 

 

Track Record

The composition of our clientele serves as a reflection of our track record in providing business & intellectual property law and litigation legal services.

Our clients come from throughout the US and other countries, namely Germany, Taiwan, China and Japan. They include individuals and businesses, large, medium-sized and small. Our corporate clients include multi-nationals with offices in the United States, Japan, Germany, Taiwan, Singapore, Korea, China, and Hong Kong. A sampling of our corporate clients includes Sing Tao Newspapers (L.A.), Ltd., Tawa Supermarkets, Inc., Cixing Group Co.,Ltd., GGEC, Wanxind(Guangzhou) Technology Product, Ltd., Mark Bright Investments, Sunpentown International, Inc., Air Bag Packaging Co., Acer America Corporation and Amtran Technology Co., Ltd.

 

 

 

 

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INTELLECTUAL PROPERTY ASSET AUDITS AND VALUATION

By Steve T. Tsai

Why Should a Business Audit Its Intellectual Property Assets or Have them Valuated?

The fastest growing sectors of today’s economy are knowledge-based and depend largely on the value of their intellectual property for survival and growth. According to one study, in 1978 twenty percent of corporate assets in this country were intangible assets, of which intellectual property is a subset, but by 1997 seventy-three percent of corporate assets were intangible assets.1 Globally, trade in intellectual property assets makes up “more than 20 percent of world trade, or approximately US $740 billion.” 2 As an added perspective, in his April 23, 2002 statement before the Subcommittee on Commerce, House of Representatives, James E. Rogan, the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office said, IP industries represent the largest single sector of the American economy – almost 5% of GDP- and employ over 4 million Americans. Copyright industries, for example, are creating jobs at three times the rate of the rest of the U.S. economy. In 2006-2007, total copyright industries alone contributed 1.52 trillion dollars, or 11% of GDP of this country, and the growth rates of these industries was more than twice that of the economy as a whole.

Thus, it is crucial for a knowledge-based business to find out what kind of intellectual property assets it has, through an audit, and then to valuate them. A knowledge based business must do so before it can make informed decisions on where and how to invest its resources to maintain, develop and enforce its intellectual property and, thus, its competitiveness. Such decisions include determining which intellectual property assets to develop, whether or not to continue developing an asset, what licensing fee to charge, which assets are suitable for cross-licensing, how much an asset should be sold for and whether or not to sue for infringement. Put differently, if you don’t know what the crown jewels in your intellectual property portfolio are worth, how do you know you haven’t licensed it away for too little or given away too many rights?

While there is no set formula for conducting an intellectual property audit, it consists primarily of identifying the types of intellectual property assets that the business possesses, those that are important or essential to the business’ revenue growth and protection, what technologies are encompassed in the new products or services that the company is planning to introduce, and a review of existing agreements and disputes involving these assets. The audit is also a good way to find out whether you are properly protecting your intellectual property assets.

With respect to valuating intellectual property assets, there is presently no one method that is suitable for all such assets and each method has its inherent limitations. The three accepted and most commonly used valuation methods are: cost, income and market value.

The Cost Method

This method measures the value of the asset by ascertaining either how much it would cost now to create an asset with equal utility to the subject asset using current technology, or how much it would cost now to build an exact copy of the subject asset. 4 The first approach measures the cost of obtaining and using current technology to arrive at an equivalent substitute for the subject asset (replacement cost) whereas the second approach measures the current cost of duplicating the intellectual property asset in the form it was in when it was created (duplication cost).

In essence, the cost method equates the value of the future benefits stemming from an intellectual property asset with one of the above two types of costs.

The Income Method

This method looks at the present value of the net income that can be generated by the asset over its economic life. This income stream can take the form of royalties, proceeds from the sale of the asset, revenue from enforcement of rights in the particular asset or a combination of all three. The economic life of the asset is dependent on a number of factors, which vary depending on the type of intellectual property. In the case of patents, the probability that a competitor will design an equivalent around the patented invention, development of a superior product that would replace the patented invention, market life of a product utilizing the patented technology, and invalidation of the patent are some of the considerations affecting the duration of a patent’s economic life. With trademarks, it is assumed that the more you invest in a trademark, the longer its economic life. The economic life of copyrights depends on the timeliness, breadth and versatility of the exploitation of the copyrighted work. Because intellectual property rights are created by law, the legal life of an intellectual property asset is a factor that must be taken into consideration in calculating the income to be derived from the property.

The Market Value Method

This method looks at the fair market value of the intellectual property asset, i.e. what the asset would fetch if it were sold to a willing buyer at arms length. It requires identifying prices for arms length transactions involving comparable assets in an active, public market in order to determine what the market rate should be. As such, it is rarely used because usually information on comparable asset transactions is not publicly available and/or there isn’t an active market for such transactions.

For further incentive to conduct an intellectual property audit and valuation, one need only look at the enormous rewards that successful exploitation of intellectual property assets can bring. Texas Instruments now derives more revenue from licensing its intellectual property than from manufacturing.

Enforcing intellectual property rights in non-core technologies can be a good source of additional revenue too. Similarly, market perception of the value of a company’s core intellectual property, upon which the company is dependent for its competitive edge, can greatly affect the company’s share price. In the case of TiVo, Inc., a company traded on NASDAQ, it experienced a 44% drop in its share price within 10 days of competitor Gemstar’s announcement that it was suing TiVo for patent infringement of key technology used in TiVo’s digital video recorders and a 127% increase in its share price within two days of its announcement that it had received a patent covering many key inventions in its business. 6 Nor should we forget Polaroid’s historic victory against Kodak in 1990 when a trial court awarded it $925 million against Kodak for infringement of its instant photography patents. Polaroid also forced Kodak out of the instant photography business.

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* 1Kenneth Crosin, Management of IP Assets, AIPLA Bulletin (2000 Mid Winter Meeting Issue). 2Lesley Ellen Harris, Digital Property: Currency of the 21st Century, p. 51 (1998). 3John Eggerton, Copyright Industries Contribute More than 1 Trillion Dollars to Economy: Study, Multichannel News (July 20, 2009) 4Lisa M. Brownlee, Intellectual Property Due Diligence in Corporate Transactions, Sections 12:6-7 (1998). 5Alexander I. Poltorak and Paul J. Lerner, Corporate Officers and Directors Can Be Liable for Mismanaging Intellectual Property, JurisNotes.com. Originally published in two parts in Patent Strategy & Management: Volume 1, Number 1(May 2000); and Volume 1, Number 2 (June 2000). 6 Craig P. Opperman, Do Patents Really Make a Difference to Stock Price? Intellectual Property Today, p. 8 (February 2002).

 

 

Law Offices of Steve T. Tsai - 27 Mauchly, Ste. 212, Irvine, CA 92618 949-788-0968 - Business, Patent & Intellectual Property Lawyer

Areas of Practice


Intellectual Property Lawyer, Intellectual Property Attorney, Trademark Copyright & Patent Lawyer, Trademark Copyright & Patent Attorney, Trial Lawyer, Business Lawyer, Business Litigator, Corporate Attorney, Corporate Lawyer, Employment & Real Estate Attorney, California Intellectual Property Lawyer, California Trademark Copyright & Patent Lawyer, California Trial Lawyer, California Business Litigator, California Business Lawyer, California Employment Lawyer, Orange County Patent Lawyer, Orange County Intellectual Property Lawyer, Orange County Business Attorney, Orange County Business Lawyer, Orange County Trademark Copyright and Patent Attorney, Orange County Corporate Lawyer