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Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
Robo Development 2008
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Robo Development 2008


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This is the presentation that I gave at RoboDevelopment in Santa Clara, CA

This is the presentation that I gave at RoboDevelopment in Santa Clara, CA

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  • 1. Key Intellectual Property Issues Brian J. Colandreo Mark H. Whittenberger
    • IP Prosecution 101
      • trade secrets
      • trademarks
      • copyrights
      • patents
    • IP Litigation 101
      • enforcement
      • leveraging your IP
      • raising capital
    • IP Management & Best Practices
      • lab note books
      • provisionals
      • NDAs
    • Q&A Session
  • 3. Elements of Intellectual Property
    • Trade Secrets
    • Trademarks
    • Copyright
    • Patents
    • Mix n’ Match all Pieces to Build a Valuable IP Portfolio
  • 4. Why Bother?
    • Ownership and Control of IP Raises Bottom Line
    • Risk Management Addresses Potential Problems
    • Provides Cross-Licensing Opportunities if Sued
    • Provides Credibility to Shareholders / Investors
    • Provides Freedom to Operate and Focus on Business
    • Beneficial When Trying to License to Large Companies
    • Business Plans Should Layout a Detailed IP Plan
  • 5. Trade Secrets
    • WHAT IS IT: A Form of Protection Against those that Misappropriate Confidential Information
    • Two Basic Requirements:
      • 1) Information Must Have Commercial Value; and
      • 2) Information Must Be Maintained as a Secret.
    • No Applications... No Filing Fees...
    • Mostly State law
  • 6. Trademarks / Service Marks
    • WHAT IS IT: Any word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods / services of one party from those of others.
    • Anything Can Identify Products / Services!
    • NBC Chimes... Pink Fiberglass... Nike Swoosh... Golden Arches...
    • Federal Registration Requires Use in Interstate Commerce
  • 7. Copyrights
    • WHAT IS IT: Protection for the Expression of Creative and Original Works
    • Inexpensive and Long Lasting
    • Copyright Protection Exists Automatically! No Filing Requirement or Notice Needed
    • BUT - Copyright Notice Prevents Claims of Innocent Infringement; (e.g.: © Copyright 2008 XYZ Corporation, All Rights Reserved)
    • Filing Application within 3 Months of Publication / Distribution has Benefits (e.g.: Statutory Damages)
  • 8. What Is a Patent?
    • WHAT IS IT: Protects an Idea Itself, as Opposed to Just the Expression of the Idea
    • Right to Exclude Others from:
      • Making, Using
      • Selling, Offering to Sell
      • Importing the Claimed Invention
      • of the Issued Patent!
    • 20 Year Term from Earliest Filing Date
    • Quid Pro Quo: Temporary Monopoly in Exchange for Disclosure
    No Trespassing!
  • 9. Who Is Entitled to a Patent?
    • U.S. has a “First to Invent" System and not (yet) a “First to File” System (like other countries)
    • Keep Detailed Records Documenting the Date of Invention:
      • Engineering Notebooks or Electronic Records
      • Each Page Dated, Initialed & Witnessed (for notebooks) & Validated Backups for Softcopies
      • Defensive Purposes - Show First to Invent
      • Interference Proceedings – Prove First to Invent
      • Incremental Provisional Filings?
  • 10. Is a Patent Necessary if You Have Copyright Protection?
    • Patents Protect the Idea Itself
    • Copyrights DO NOT Protect Functional Concepts or Ideas
    • Copyrights ONLY Protect the Expression of an Idea
    • Copyrights Do Not Protect Against Independent Creation
    • Copyrights and Patents are NOT Mutually Exclusive
      • A Software Program may be Protected by both a Copyright and Patent. A Copyright may protect against Outright Copying and the Patent may protect the Implemented Methodology
  • 11. Is a Patent Necessary if You Have Trade Secret Protection?
    • Trade Secret Protection is LOST if the Invention Becomes Known through Reverse Engineering, Subsequent Independent Discovery, or Authorized or Unauthorized Disclosure
    • Some Inventions Cannot be Commercialized without Disclosure
    • Trade Secret Protection DOES NOT Prevent a Competitor from Patenting “your” Invention
  • 12. What Can Be Patented?
    • Patentable Subject Matter
      • Apparatus (Machine or Device)
      • Processes (Method)
      • Article of Manufacture
      • Composition of Matter
      • Improvements of Existing Technology
    • Utility Patents protect Functional Features
    • Design Patents protect Aesthetic Features
  • 13. What SHOULD Be Patented?
    • Commercially Valuable Systems, Devices, and Methods
    • Devices and Processes Unprotectable by Trade Secrets
    • Inventions that have a 4+ Year Lifespan
    • Inventions that have Sufficient Claim Scope to Avoid Design Arounds
    • Inventions that Support the Business Plan
    • Inventions for which Infringement is Detectable
    • The GOAL Should NOT BE just a Patent, but a Commercially-Valuable, Valid and Enforceable Corporate Asset
  • 14. Prerequisites for a Patent are that the Invention is: Useful Non-Obvious New
  • 15. U.S. Statutory Bars (35 USC §102)
    • You are NOT Entitled to a U.S. Patent if:
    • Before the Date of Invention, the Invention was Already Known / Used in the U.S. or Published / Patented / Sold / Used Anywhere by a Third Party
    • More than 1 Year Before the Filing Date, the Invention was Disclosed in a Printed Publication Anywhere or in Public Use / Sold / Offered for Sale in the U.S.
    • Most Foreign Patents Require ABSOLUTE NOVELTY
    • Therefore, Disclosure Prior to Filing Results in a Loss of Foreign Patent Rights
  • 16. Foreign Statutory Bars
    • Absolute Novelty Requirement: Patent Application MUST BE Filed before ANY Public Disclosure is Made
    • Events that MAY Destroy Foreign Rights (varies by country)
      • "Divulging" of the Invention (e.g., Public Use, Public Testing)
      • Printed Publication or Descriptive Marketing Materials
      • Other Disclosures (e.g., Speeches at a Technical Conference)
      • Sales that Effectively Operates as a Disclosure
      • Where Are You Testing Your Robots?
  • 17. Implementation of Strategy
    • Decide Goals (Offensive, Defensive, Market Valuation)
    • IP Audit – Define ALL Possible IP
    • Allocate a Budget
    • Establish Corporate Patent Procedures
      • Written Invention Disclosures and Invention Harvesting
      • Patent Evaluation Committee to Ensure Robust Program
      • Educate Employees (including Marketing and Sales) to Statutory Bars
      • Mark Products with Patent Numbers
  • 18. Utility Patent
    • Protects Functionality: Processes, Methodologies, Devices, Business Systems, Product-by-Process
    • Fairly Expensive to Prepare & File
    • Formal Drawings Required
    • Takes Time to Draft and File for Inventor and Attorney
    • Subject to Rigorous Examination & Office Actions
    • Takes Multiple Years to Prosecute to Issuance
    • Requires Payment of Issue Fees & Maintenance Fees
  • 19. Provisional Patent Application
    • Easier to File than Utility, Less Formality, Less Expensive
    • Filed Quickly Before Disclosures / No Claims Needed
    • Provides “Patent Pending” Status & Preserves International Rights
    • 1 Year to Assess Market
    • Never Published so RETAINS Trade Secret Status
    • Never Examined / Does Not Issue
    • Delays Issuance
    • Provides False Sense of Security
    • Requires Conversion to a Utility / PCT Application
  • 20. Summary
      • Enforce the Patent Against Infringing Competitors
      • Use the Patent as Leverage When You're Accused of Infringing a Patent
      • Use the Patents to Raise Capital
    Now That You Have a Patent, What Do You Do with It?
  • 21. Summary
    • Patent Cases Brought in Federal Court with Jurisdiction
    • Infringer's Product Must Meet Each Limitation of the Claims to Infringe
      • Literally
      • Under the Doctrine of Equivalents
        • Function/Way/Result
    • Patent Gives You a Negative Right
      • Right to Keep Others From Making, Using or Selling
      • Does Not Necessarily Give You a Right to Make, Use or Sell
    Enforce the Patent Against Infringing Competitors
  • 22. Summary
    • Average Cost of Patent Litigation from Beginning to End
      • $600,000 to $2.5M (Less than $1M to $25M at Risk)
        • Source - AIPLA Report on the Economic Survey 2007
    Patent Infringement Actions Are Expensive
  • 23. Summary
    • Discovery (Document Production, Depositions, Location)
    • Discovery Disputes
    • Reasonableness of the Parties
    • Technology
      • Experts
    • Prosecution History (claim construction, multiple continuations, etc.)
    • Counterclaims (Invalidity, unenforceability, counterclaim for infringement)
    What Influences Cost of Litigation
  • 24. Summary
    • Opposing Party Will Seek Everything That Relates to the Patent and Products-in-Suit
      • Marketing Documents
      • Financial Documents
      • Emails
      • Meeting Minutes
      • Notebooks
    • Prosecution Files (including communications with prosecution counsel)
  • 25. Summary
    • Limit Claims
      • Emails to Prosecution Attorney describing the invention
      • Internal emails and memos about the invention and product
    • Limit Damages
      • Marketing materials discussing competition and/or their products
    Everything You Say Now Can and Will Be Used Against You In Litigation to:
  • 26. Summary
    • Once You Instigate a Patent Suit, You Will Be in Until Settlement or Trial
      • Even if you want to drop your suit, opponent's counterclaims may keep you in the litigation
    • Declaratory Judgment
      • If you accuse someone of infringing your patent, they can file a declaratory judgment for non-infringement and invalidity
    Pit Falls to Patent Litigation
  • 27. Summary
    • If You Are Accused of Infringement, You Can Counterclaim with Your Patents
    • If You Can Potentially Kick the Competitor's Product Off the Market, There is a Better Chance for a Business Solution
      • Cross-Licensing
      • Walk Away
    Use the Patent as Leverage When You're Accused of Infringing a Patent
  • 28. Summary
    • Venture Capitalists and Angels Will Want to See Strong IP Portfolio
    • Why Would These People Invest If Someone Could Just Walk into the Market You Establish?
    • Provides Credibility to Shareholders / Investors
    • Can License to Larger Company ( i.e. – levels the playing field)
    • Protects You in Joint Development/Marketing Ventures
    Use the Patents to Raise Capital
  • 29. Summary
    • Will the Other Side Sign?
    • What Happens If the Other Side Discloses Anyway?
    • Are your Rights Preserved?
    • Can You Collect Damages?
    Non-Disclosure Agreements
  • 30. Summary
    • Why Bother?
    • First to Invent Country
    • What is Needed:
      • Bound Book
      • Entries Signed / Dated
      • Written in Ink
      • Witnessed
      • Blank the Blanks
    Lab Notebooks
  • 31. Summary
    • Again...Why Bother?
    • Cumulative or Non-Cumulative?
    • How Often?
    • Benefits:
      • Minimal Cost
      • Allows Maintaining of Trade Secrets
      • Protects Against Inadvertent Disclosure and Loss of Foreign Rights
    Incremental Provisional Filings
  • 32. Summary
    • The Four Main Types of IP all Play a Role in Protecting and Successfully Commercializing Your Technology
    • Invest Strategically in IP protection. IP Protection and Enforcement can become Very Costly, So Focus on IP Investments that Truly Support your Business Objectives
    • Inexpensive and Easy to Follow Procedures may Protect Against Loss of Rights