Patents and Trade Secrets How to safeguard your company against illegal knockoffs and counterfeits Robert J. Roby, Esq. Knobbe, Martens, Olson & Bear

Patent Basics NOT a right to make and sell a product ONLY a right to exclude OTHERS from making and selling products NO worldwide patent

NOT a right to make and sell a product

ONLY a right to exclude OTHERS from making and selling products

NO worldwide patent

What Is Patentable? ALMOST anything New Not obvious Device, appearance of device, method of making device, method of using device, business methods, etc.

ALMOST anything

New

Not obvious

Device, appearance of device, method of making device, method of using device, business methods, etc.

Types of Patents Design patents Ornamental appearance Utility patents Functional aspects and methods (Provisional patent applications ) Never examined; never issued

Design patents

Ornamental appearance

Utility patents

Functional aspects and methods

(Provisional patent applications )

Never examined; never issued

Patent Scope Design patents Determined by solid lines in drawings Inherently narrow Utility patents Determined by language of “claims”

Design patents

Determined by solid lines in drawings

Inherently narrow

Utility patents

Determined by language of “claims”

Example of Design Patent Claim

Example of Utility Patent Claim

Patent Term Design patents 14 years from issuance Utility patents 20 years from earliest nonprovisional U.S. filing date

Design patents

14 years from issuance

Utility patents

20 years from earliest nonprovisional U.S. filing date

Patent Costs and Times Design patents $4000 and 1 year plus Utility patents $20,000 and 3 years plus Provisional patent applications $3000 and 1 year only

Design patents

$4000 and 1 year plus

Utility patents

$20,000 and 3 years plus

Provisional patent applications

$3000 and 1 year only

Trade Secrets Valuable business information Not generally known Provides economic advantage Reasonable efforts Once disclosed, no longer exists

Valuable business information

Not generally known

Provides economic advantage

Reasonable efforts

Once disclosed, no longer exists

Summary *Note: patents must be filed before the end of one year following any public disclosure or offer for sale

Patent Claim Strategies

Patent Claim Strategies

Patent Claim Strategies

Picket Fence v. Solid Wall Picket Fence Multiple focused continuations Lower incremental costs Easier prosecution because narrower Indirect fuel injection/direct fuel injection Solid Wall Single attempt Broad claims are resisted by patent office More difficult prosecution Fuel injected engine

Picket Fence

Multiple focused continuations

Lower incremental costs

Easier prosecution because narrower

Indirect fuel injection/direct fuel injection

Solid Wall

Single attempt

Broad claims are resisted by patent office

More difficult prosecution

Fuel injected engine

Why Get IP? Protection from copiers Build company assets Create prior art Cross-license opportunities to avoid litigation Licensing revenue

Protection from copiers

Build company assets

Create prior art

Cross-license opportunities to avoid litigation

Licensing revenue

What Form of IP?

IP Budgeting Difficult/expensive Strategy varies Business size, growth plan, market size, market life, development cycle, margins Cost/benefit If patent is $20,000 and revenues will not reach that level, why file? Asset for exit strategy

Difficult/expensive

Strategy varies

Business size, growth plan, market size, market life, development cycle, margins

Cost/benefit

If patent is $20,000 and revenues will not reach that level, why file?

Asset for exit strategy

Company Strategies Single product Protect “crown jewel” Multi-product Develop negotiating chips Rapid growth Consider auditing IP Mature business Licensing/sale of IP

Single product

Protect “crown jewel”

Multi-product

Develop negotiating chips

Rapid growth

Consider auditing IP

Mature business

Licensing/sale of IP

THANK YOU ! Robert J. Roby Partner Knobbe, Martens, Olson & Bear, LLP 2040 Main Street 14 th Floor Irvine, CA 92614 Telephone: 949-760-0404 Facsimile: 949-760-9502 E-Mail: rroby@kmob.com

Robert J. Roby

Partner

Knobbe, Martens, Olson & Bear, LLP

2040 Main Street

14 th Floor

Irvine, CA 92614

Telephone: 949-760-0404

Facsimile: 949-760-9502

E-Mail: rroby@kmob.com