Are Patents Worth The Trouble? by Kunzler IP

Bryan J. Massey Intellectual Property Attorney Patents: Are They Worth the Trouble?

Yes
No
Maybe
Introduction So, Are Patents Really Worth the Trouble?

What is a Patent?
Why Should You Patent?
Who Should Patent?
When Should You Patent?
Where Should You Patent?
Introduction The Five W’s of Patents

What is a Patent? Trademark Protects Brands and Product Identity Indefinite Term of Protection Similar to Design Patents Protects artistic expression Lengthy, but Definite, Term of Protection Software Protects Valuable Confidential Information Indefinite Term of Protection Requires Secrecy A Patent Is Not Trade Secret Copyright

A Time-Limited Monopoly of the Right to Make, Sell, Use, and Import the Subject Matter Within the Scope of Protection Granted by the Patent.
What is a Patent? A Patent Is

What is a Patent? 1 2 3
Utility Patent: Protects function (i.e., the “how it works”) of a useful invention
Potentially Broad Protection
3+ Years To Obtain
20 Year Term
Design Patent: Protects ornamental appearance of a useful product
Narrow Protection
Quick, Cheap, Easy
14 Year Term
Plant Patent: Protects botanical characteristics of certain types of bioengineered plants
Patent Types

U.S.
Provisional
1 Year Term
Placeholder
Non-Provisional (Regular)
Foreign
PCT International
Regional (EPO, ARIPO, etc.)
Individual Countries
What is a Patent? Utility Patent Types

What is a Patent? Utility Patent Procurement

What is a Patent? Utility Patent Procurement
Application
Drawings (if necessary)
Written Description
Claims
Prosecution
Pre-Appeal: Novel and Non-Obvious = Allowance
Appeal to BPAI
Appeal to Federal Courts
Pre-Application Patentability Assessment
Search: Issued Patents and Patent Publications
Statutory Bars

What is Patent Value?
What are Patent Burdens?
How to Reduce Patent Burdens?
Why Patent? Issues Patent Success = Value - Burdens

Legal Monopoly (Exclusiveness)
Offensive
Licensing
Litigation: Plaintiff
Defensive
Direct and Indirect Market Exclusivity
Litigation: Defendant
Intangible Property Asset
Ex.: U.S. IP Value: $5.5T, Nortel/Google: $900M
Why Patent? Value

Patent Counsel
Long Waits
Low Allowance Rates
Expensive
Monetization
Others?
Why Patent? What Are the Burdens?

Not All Patent Firms/Attorneys Created Equal
Size Doesn’t Always Matter
Choose Wisely
Why Patent? Patent Counsel

Traditional Petitions
No Fee: Age and Health
Fee: All Others (Onerous Requirements)
Recently-Enacted Petitions
Green Technology (Any Class)
Discovery/Development of Energy Resources
Utilization/Conservation of Energy Resources
Green House Gas Reduction
Patent Prosecution Highway (PPH)
No Fee
Why Patent? Long Waits—Accelerated Examination

Fast Track
$4,000
Accelerated Examination: 4/12
Normal Track
No Fee
Normal Examination
Slow Track
Fee???
Delayed Examination: Up To 30 months
May Require Pre-Grant Publication
Why Patent? 1460 N Long Waits—New Track System

Multiple Pending Applications
Voluntarily Cancel One Application
Receive Accelerated Examination on Another Application
Why Patent? Long Waits—Voluntary Cancellation

Prior to First Office Action
Prior Art Search
Informal Rejections/Objects
Conduct Interview to Discuss Rejections/Objections
Resolution
Agreement: Allowance
No Agreement: First Office Action
Why Patent? Long Waits—First Action Interview

Higher Budgets
Remote Offices
Examiner Training
Why Patent? Long Waits—Intra-USPTO Changes

Patent Prosecution Highway (PPH) and Accelerated Examination
Examiner Training
Examiner Interviews
Claim Drafting Strategies
Know Your Examiner Type
Pre-Appeal Brief Conferences
Why Patent? Low Allowance Rates

Provisional Applications
Delay/Avoid Costs
Types: Heavy ($5,000), Medium ($3,000), Lite ($1,000)
Application Preparation ($5K-$8K)
Application Prosecution ($1K-$$$)
Reducing Waits/Increasing Allowance Strategies
Active Patent Counsel
Prior Art Searches (Free-$1K)
Why Patent? 1460 N. National Road. 1460 N. National Road. Expensive—Procurement

Spend More on Procurement
Claim Strategy/Disclosure
Good Prior Art Searches
Disclose Search Results to Patent Office
Patent Invalidation Harder Based on Prior Art Disclosed to Patent Office
Fee Arrangements
Contingency Fees, Success Fees, Limited Representation, Flat Fees
Why Patent? 1460 N. National Road. 1460 N. National Road. Expensive—Enforcement

Sell
IP = $$$
Scope of Claims
Demand for Claimed Technology
Licensing, Usage, Royalty Fees
Patent Matchmakers, Brokers, Auctions
Enforce
Indirect
Funding
Exclusivity
“ Patent Pending”
Why Patent? Monetization

Longevity
Technology Shelf Life > 3 years
Trade Secrets
Methods of Manufacture
Reverse Engineerable
Marketable
Successful Business Model
Surveys—NDAs
Who Should Patent? Technology Dependent

Patent Rich/Lean
Defensive Publications
Who Should Patent? Industry Dependent

Too Early
Core Functional Concepts Still Under Development
Too Late
Public Disclosure: Foreign vs. U.S.
Trials/Experimentation Exception
Commercialization Attempts
Swearing Back Implications
Paris Convention
Non-Disclosure Agreements
Governed Under Contract Law
Patent Reform Act: First To File
When to Patent?

U.S.
Foreign
PCT
Searching Authority Considerations
Regional Organizations
Front-End Loaded
Individual Countries
Unique Requirements
Where to Patent?

Where to Patent? Patent Filings 2000-2009

Where to Patent? Patent Filings Per Year 2000-2009

Compare Value vs. Burden
Understand Technology/Industry
Choose Wisely
Peace of Mind
Changes are Coming
Conclusion Are Patents Worth the Trouble? THANK YOU!!

Are Patents Worth The Trouble? by Kunzler IP

by Grow Utah Ventures

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