Intellectual Capital Strategy

Finding and Using the Best Intellectual Capital Strategy to Protect your Idea IC for the Entrepreneur Reed Shick January 22, 2010

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!

IC Strategy Elements
Business Plan
External Technology
Competition
IP
Documentation
Licensing
Agreements
Freedom to Operate

Business Plan
Your IP Strategy exists for one purpose only!
Protect your business plan
No plan = high cost or lost value IC
All options open = $$$
Change plan, lose IC value

Competition, Cooperation
Know what others are doing
Technology search
Company deep drills
Government/School research
Decide to compete or cooperate?
Create value always
Information Sharing
License in or out

Early Stage Paradox
Protect your Idea VS. Share your Idea
Public disclosure = no patent, stolen idea
Not sharing idea = no support
Know what to share and when
Understand essential element of your idea
Document list of public knowledge
Decide what to share with CDA
Know what you will never share

Basic Protection Tools
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

Strategic Patent Issues
Cost vs benefit
Who are you stopping from what?
What is in and out of scope?
What is current state of the art?
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

Patent Considerations
Timing
File soon: first coverage, may miss value
File late: better understanding, may be too late
Important dates
Provisional one year to complete
18 months publish
30 month rollout
Simple patent vs complex
Fast limited coverage
Application held open for CIP or divisional
Patent Office Politics

Fast Patents
Conventional Filing First!
Cover your entire idea
Co-file multiple or 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, so you can break off divisional or CIPs
Hire, work with, communicate with and manage an attorney!

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!

Trademarks
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
Secret is in use
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

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

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

LICENSING
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

http://incuba8.com	49
http://www.slideshare.net	12

Intellectual Capital Strategy

by Incuba8 on Jan 27, 2010

Accessibility

Categories

Tags

Upload Details

Usage Rights

2 Embeds 61

Statistics

Intellectual Capital Strategy — Presentation Transcript