Intellectual Capital Primer IC for the Entrepreneur Reed Shick, Ph.D August 18, 2009

What is Intellectual Capital? Intangible Assets Tangible Assets Patents Trade Secrets Trademarks Documented Know how Customer Relationship Head Knowledge Business System Good Will IP IC Physical Plants Equipment Product Inventory Office Buildings Accounts Receivable Cash and monetary instruments

Why do I care? In 2005, over 80% of average company value is in IC, not tangible assets Some companies much higher Start up, IC is usually pretty high value Your IC Strategy directly supports your business strategy Patents can create or destroy value Trade Secrets Coke recipe valued over $1,000,000,000! Keep your confidential information protected!

In 2005, over 80% of average company value is in IC, not tangible assets

Some companies much higher

Start up, IC is usually pretty high value

Your IC Strategy directly supports your business strategy

Patents can create or destroy value

Trade Secrets

Coke recipe valued over $1,000,000,000!

Keep your confidential information protected!

Basic Protection Patents Trademarks Trade Secrets Publications Freedom to Operate Confidentially Agreements Licensing

Patents

Trademarks

Trade Secrets

Publications

Freedom to Operate

Confidentially Agreements

Licensing

Basic IC Strategy Go Fast Rapid changing field, no patents New Composition of Matter Invent new material (future commodity) Patent (COM + Process) or Trade Secret Bouquet Application of known goods or services Patent best mode + concept Already known goods or service Ensure Right to Practice Robust Publications

Go Fast

Rapid changing field, no patents

New Composition of Matter

Invent new material (future commodity)

Patent (COM + Process) or Trade Secret

Bouquet Application of known goods or services

Patent best mode + concept

Already known goods or service

Ensure Right to Practice

Robust Publications

Strategic Patent Issues Cost vs benefit Who are you stopping from what? What is in and out of scope? Speed to patent? Where will you compete? How will your competitors respond? Devils advocate Blocking (defensive) patents Invention Strategy What can we develop and patent?

Cost vs benefit

Who are you stopping from what?

What is in and out of scope?

Speed to patent?

Where will you compete?

How will your competitors respond?

Devils advocate

Blocking (defensive) patents

Invention Strategy

What can we develop and patent?

Patents US Patents 20 year government granted monopoly Negative right, can stop others from infringing Patent an Idea Provisional Filing - Conventional Filing WIPO, EP Needs more data, time and $$$ Detect Infringement

US Patents

20 year government granted monopoly

Negative right, can stop others from infringing

Patent an Idea

Provisional Filing - Conventional Filing

WIPO, EP

Needs more data, time and $$$

Detect Infringement

Fast Patents Conventional Filing First! Cover your entire idea Break out divisional Choose areas for fast grant At first office action have phone interview with examiner Continue to fight for rest of application Keep the base case open, you can always break off divisional or CIPs Hire, work with, communicate with and manage an attorney!

Conventional Filing First!

Cover your entire idea

Break out divisional

Choose areas for fast grant

At first office action have phone interview with examiner

Continue to fight for rest of application

Keep the base case open, you can always break off divisional or CIPs

Low Cost Patents Provisional Filing One Year to convert Cover your entire idea Good for idea you are selling Convert to Conventional Filing Pare claims to heart of value Phone interview with examiner Roll out to limited country list Cover major producer and user Hire, work with, communicate with and manage an attorney!

Provisional Filing

One Year to convert

Cover your entire idea

Good for idea you are selling

Convert to Conventional Filing

Pare claims to heart of value

Phone interview with examiner

Roll out to limited country list

Cover major producer and user

Trademarks USPTO.gov Check for originality TESS Application Use attorney OR DIY TEAS (application) + TMEP (instruction) Fill out the forms

USPTO.gov

Check for originality

TESS

Application

Use attorney OR DIY

TEAS (application) + TMEP (instruction)

Fill out the forms

Trade Secrets Document Trade Secrets Written, filed, protected Inform any leaving employees of trade secrets Only reveal trade secret with employee contract or confidentially agreement Document your ideas Bound numbered, countersigned databook

Document Trade Secrets

Written, filed, protected

Inform any leaving employees of trade secrets

Only reveal trade secret with employee contract or confidentially agreement

Document your ideas

Bound numbered, countersigned databook

Publications Defensive Publications Destroy novelty, maintain freedom to operate IP.com, trade journals, conference proceedings Offensive Publications Promote product, technology and people Refereed journal, trade journal, newspaper, conference, web page

Defensive Publications

Destroy novelty, maintain freedom to operate

IP.com, trade journals, conference proceedings

Offensive Publications

Promote product, technology and people

Refereed journal, trade journal, newspaper, conference, web page

Freedom To Operate Insure you can do what you want to do…. Prior Art, Current Awareness Google Patents, USPTO (MicroPatent, Aureka) Make sure patent is valid and in force Check grant and expiration date, fees paid Oppositions Invalidation License Get written legal opinion

Insure you can do what you want to do….

Prior Art, Current Awareness

Google Patents, USPTO (MicroPatent, Aureka)

Make sure patent is valid and in force

Check grant and expiration date, fees paid

Oppositions

Invalidation

License

Get written legal opinion

Confidentially Agreements (CDA) One Way, protects one party Two Ways protects both Can cover Information and samples Include prohibition on disclosure of either your information or joint information to patent office Download from internet or your lawyer

One Way, protects one party

Two Ways protects both

Can cover Information and samples

Include prohibition on disclosure of either your information or joint information to patent office

Download from internet or your lawyer

LICENSING In license What am I getting? Exclusivity? How long, what cost? Out license Patents, Trademarks, Know How Territory, Exclusivity Sale or royalty stream

In license

What am I getting?

Exclusivity?

How long, what cost?

Out license

Patents, Trademarks, Know How

Territory, Exclusivity

Sale or royalty stream

Summing it all up Develop an IP plan to follow business plan Execute on Patents, Trade Marks, Trade Secrets Use best practices on agreements, FTOs License technology in or out maximize value

Develop an IP plan to follow business plan

Execute on Patents, Trade Marks, Trade Secrets

Use best practices on agreements, FTOs

License technology in or out maximize value