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
  • 2. OVERVIEW
    • IP Prosecution 101
      • trade secrets
      • trademarks
      • copyrights
      • patents
    • IP Litigation 101
      • enforcement
      • leveraging your IP
      • raising capital
    Overview
    • 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
    • ADVANTAGES :
    • 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
    • DISADVANTAGES :
    • 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)
    Discovery
  • 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
    Summary