1. Chemical engineers sought my consultancy’s services because they had not been compensated for and were denied further access/use to an innovative process (work product) they had jointly developed that permitted a housing materials manufacturer to achieve a substantial industry-wide breakthrough, i.e., efficiencies, competitive advantages.

What was achieved – benefit to clients

• I conducted an audit-assessment using situation specific protocols to unravel the circumstances. This included, among other things, assessing the origins of this innovation and identifying a chronology of the innovative processes and testing used in developing and determining the viability of this product for large scale manufacturing and consumer use.
• I also engaged in research to develop estimates of the value this innovation would likely make (contribute) to this particular company and the housing materials industry, in general.
• I described various options and familiarized the clients about alternatives intended to re-establish control and ownership of the contested innovation.
• The clients used my report:
  - as the basis for assessing the strengths and weaknesses of their grievance, and
  - to determine the specialized type of legal services they needed to pursue their grievance.
• My report also proved beneficial for the clients and their attorney as an efficient mechanism to commence substantive discussions with counsel and reach consensus on a course of action.

2. An early stage web-based company requested my services to address two related challenges; first, they had no conventional IP protections or other internal measures to safeguard software that had been developed, and second, the company needed strategies to address ‘IP position’ questions that would be posed in an upcoming meeting with venture capitalists.

Following an introductory interview with company principals, I prepared protocols to engage them in a comprehensive discussion to unravel the origins, developments, and safeguards related to their company’s software and other (proprietary) information-based assets that had been developed.

What was achieved – benefit to clients

• Confirmed the company’s key-mission critical intangible assets in the form of a software program that had been designed by one of the principals which had dual-use capabilities, i.e., it had strong private sector commercialization potential as well as possible national security applications.
• Revealed significant gaps-disconnects in their information protection - assurance practices aside from basic computer/IT security.
• Identified essential (legal, technological, and procedural) asset protection and value preservation measures/procedures that should be deployed immediately prior to the scheduled meeting with prospective investors.
• Advised principals about IT insurance coverage, especially for the source code that (admittedly) served as the ‘operational center piece - driver’ to their web-based services.
• Developed a series of questions venture capitalists would (likely) ask regarding ‘the company’s IP position’ along with responses and familiarized principals on the correct application.
• Encouraged principals to secure the services of legal counsel (with a national stature) to write a ‘legal opinion’ to specifically address ‘a significant copyright issue’ related to a software program developed by a principal.

3. Entrepreneur business partners originally sought my services to help safeguard a ‘mark’ they wanted to use for the launch of a new product. The entrepreneurs expressed confidence that this ‘mark’ would serve as the key to distinguishing - branding their product launch. However, their ‘mark’ (application) was rejected by the U.S. Patent, Trademark office (based on similarity and consumer confusion). While the clients recognized the (probable) finality of the USPTO decision, they continued to seek my services to identify and examine possible options/alternatives that could conceivably allow them to proceed with their product, i.e., not abandon their project.

What was achieved – benefit to clients

• Developed an alternative business strategy, based on the concept of negotiating an arrangement (partnership and/or alliance) with one of the existing registered trademark holders cited in the USPTO letter.
• Engaged in research to examine current ‘registered trademark holders’ to distinguish company’s principals and assess potential receptivity to this proposed arrangement.
• My report included detailed negotiating points to commence this strategy as well as measures to protect, preserve, and monitor any value enhancements-fluctuations that may evolve if the subsequent negotiations and product launch was successful (profitable).

4. A proprietor of a security technology company was being sued by a former employer. The suit alleged that this individual had misappropriated trade secrets which were now being used to market and operate the individuals’ (former employees’) security technology company. The individuals’ attorney sought my services in this matter.

My (goal) charge was to

• Unravel the clients’ circumstances which included assessing the veracity of the claimed origins of the contested trade secrets.
• Make a determination as to the degree of alignment of the former employer’s practices, policies, and procedures with respect to trade secrecy requisites-standards.

Successful objectives met

• I developed specific protocols to fully address the components of both charges sited above and provide counsel with a functional and comprehensive report of my assessment (findings).
• Elements of my report were initially used to dispute-oppose an injunction and aid in discovery.

5. An intellectual property insurance company sought my services because they wanted an assessment (objective insight) regarding factors and/or variables that contribute to the probability and/or propensity for:

• fraudulent insurance claims being initiated by an insured, or
• particular vulnerability to suits that could be brought against an insured that challenged the origins and/or ownership of the innovation cited in the initial application for IP insurance.

What was achieved

• Engaged in research and examined case studies regarding all elements of fraud, specifically insurance fraud related to individuals-organizations that would likely need-seek IP insurance.
• Identified particular indicators that could serve as precursors to legal entanglements related to intellectual property which included:
  - research embellishment and/or fraud
  - legal defensibility of the insured innovation
  - vulnerability-attractivity to competitor/business intelligence, infringement, and counterfeiting
  - insider initiated misappropriation
  - evidence of information leakage prior to or after an IP insurance policy was in affect

6. University agricultural scientist sought my guidance about safeguarding and retaining control (ownership) of data evolving from a U.S. corporate sponsored/funded research project and reducing its vulnerability to misappropriation and/or counterfeiting following collaborations with researchers (colleagues) outside the U.S.

What was achieved

• Identified practical and least intrusive techniques and procedures respectful of the principles of the Bayh-Dole Act, academic freedom, and institutional openness.
• Conducted an ‘awareness and alertness’ seminar for the scientists’ research unit focusing on current and various elicitation-solicitation techniques, i.e., social engineering, pretexting, counterfeiting, etc., directed specifically to university research environments and projects.

7. University-based research targeted by foreign government sponsored entities was the focus of a project in which I examined multiple research units each of which had been awarded substantial (research) grants in agriculture, health sciences, and chemical engineering fields and assess the presence or absence of business/competitor intelligence and/or economic adversary (intelligence) collection initiatives. Intensity and frequency of ‘collection initiatives’ were the primary points of measurement.

What was achieved

• Developed two sets of interview protocols to engage designated university staff, i.e., IP legal counsel, technology transfer, scientists, faculty, and research administrators.
  - First set of interview protocols was designed for interviewees (staff) who expressed interest in – were receptive in learning about this subject/issue.
  - Second set of interview protocols was designed for interviewees (staff) who expressed philosophical opposition (i.e., no interest, unreceptive) to this subject/issue.
• A cross-section of personal experiences and perspectives were collected about the nature and extent of current ‘intelligence’ collection activities and techniques.
• Developed a series of papers broadly describing my findings, including a published paper that collectively described the global nature of the phenomena and identified key legal, political, and philosophical institutional challenges.

8. Targeting of innovation at early stage companies by competitor - business intelligence was the focus of a research project I initiated where I selected multiple early stage companies that had been identified - described in an article published in a regional business journal as ‘innovative technology - science companies of the future’.

My objective for this project was to develop a template for identifying, assessing and distinguishing reactions by national - international companies (and government sponsored units) engaged in competitor-business initiatives relative to (their) ‘targeting’ of specific innovation and/or science being developed by these companies. The measurement points were (a.) demand, (b.) attractivity, (c.) frequency, and (d.) intensity.


9. National Survey: Trends In Proprietary Information Loss – U.S. Companies I served as one of four principal investigators who designed and analyzed-wrote the findings of this 2006 survey sponsored by The Office of the National Counterintelligence Executive and the ASIS International Foundation. The Trends Survey is recognized as the premier study of its kind and has come to be one of the most referenced source routinely cited by the Director of the FBI, Senate and House Select Committees’ on Intelligence and other agencies within the intelligence community.


10. Member – Advisor Commission on Convergence, ASIS International I researched/produced five comprehensive papers for the Commission to address operational and strategic implementation issues related to ‘convergence’ as follows: (a.) ‘The Convergence Movement: Physical and IT Security, (b.) Convergence of Enterprise Security Solutions, (c.) Operationalizing Convergence, (d.) Analysis for ASIS Board of Directors, (e.) Achieving onvergence of Physical and IT Security: A Necessary Starting Point Is Enterprise Wide Security and Asset Protection for Non-Security Managers.