Knobbe Martens Partner Tom Cowan, to learn strategies for protecting your company’s IP on a reduced budget. Shutdown orders due to the COVID-19 virus pandemic have created economic disruption, causing companies to scale back on intellectual property (IP) expense. This webinar covers suggestions for protecting IP on a reduced or deferred budget. Learn different techniques for timing the expenses incurred with IP protection while establishing or maintaining priority dates. The strategies presented may provide attendees with a competitive edge over those sitting on the IP sidelines during the pandemic

1. Strategies for Protecting
Your Company’s
Intellectual Property (IP)
on a Reduced Budget
Tom Cowan
Partner
Knobbe Martens
May 13, 2020

2. © 2020 Knobbe Martens
Elephant in the Room: COVID-19 Global Pandemic
• The world has stopped…
• Unemployment
• Travel bans
• Business closures
• ...the world has not stopped
• The U.S. Patent & Trademark Office is open!
• Business booming for some: communications; medical and life
science; logistics & delivery
• This is a time for innovation: vaccines; medical devices; COVID-
19 tests; ventilators; masks; video conferencing
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3. © 2020 Knobbe Martens
Overview
• Part I: Introduction
• Why IP matters (even now)
• Basics of IP Protection
• Part II: Strategies for Securing IP Rights
• Part III: Strategies for Maintaining IP Rights
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4. © 2020 Knobbe Martens 4
PART I:
INTRODUCTION

5. © 2020 Knobbe Martens
COVID-19 and USPTO Actions Available to Applicants
• This presentation includes:
• Some things you can normally do at the U.S. Patent and
Trademark (USPTO)
• This presentation does NOT include:
• The newly-available things you can do due to COVID-19
• https://www.uspto.gov/coronavirus
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6. © 2020 Knobbe Martens
Why Care about IP at a Time Like This?
• IP protection is generally “first come, first served”
• Must be first in line
• Losing place in line may be irreparable
• These strategies may secure and maintain place in
line with reduced or deferred spend
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7. © 2020 Knobbe Martens
IP Protection Basics
• Utility Patent – inventive ideas
• Trade Secret – commercially-valuable secrets
• Design Patent – physical appearance
• Trademark – source identifiers
• Copyright – artistic expression
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Background: U.S. Non-Provisional Patent Application
• Examined by Patent Office
• Examination = Argue/Negotiate over patentability of invention
• Can claim priority to:
⎼ One or more provisional applications
⎼ Other pending non-provisional application(s)
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File Patent
Application
Issued
Patent
Examination Process
“Patent Pending”
(~6 mos. to 3 years)

9. © 2020 Knobbe Martens
Background: U.S. Continuation Applications
9
(Abandoned)
Issued
Patent #2
Non-Provisional
Application
Issued
Patent #1
Continuation
Application #1
Continuation
Application #2
CLAIM SCOPE
DIFFERENT
CLAIM
SCOPE
CONTINUATION #1
FILED PRIOR TO
ISSUANCE
CONTINUATION #2
FILED PRIOR TO
ABANDONMENT
PRIORITY DATE
FOR ALL
CONTINUATIONS

10. © 2020 Knobbe Martens
Background: Patent “Family Tree”
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U.S. NON-
PROVISIONAL
CHINESE
APPLICATION
U.S.
CONTINUATION-
IN-PART
APPLICATION
PRIORITY.
CIP
U.S. PROVISIONAL
PATENT
APPLICATION #1
U.S.
PROVISIONAL
APPLICATION #2
PRIORITY
EUROPEAN
APPLICATION
INTERNATIONAL
PCT PATENT
APPLICATION
PCT
NATIONAL PHASE
JAPANESE
APPLICATION
NATIONAL PHASE
INTERNATIONAL
PCT PATENT
APPLICATION
U.S.
CONTINUATION
APPLICATION
CON
NATIONAL PHASE
PCT
EUROPEAN
APPLICATION
NATIONAL PHASE
JAPANESE
APPLICATION
NATIONAL PHASE
U.S.
CONTINUATION
APPLICATION
CON
TIMEearlier filed
later filed
priority chain

11. © 2020 Knobbe Martens
Patent Protection - Not all Patents are Equal
• “Patented” vs. “Confidence”
• Patents have varied strength and scope of
protection
• High-quality patent = $$$
• The following lower-budget strategies may
sacrifice quality
• Consult with IP counsel to fully understand
pros and cons
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PART II:
SECURING IP
PROTECTION

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Strategy #1: “Coached” Application Drafting
• Attorney provides an
application “template”
• Inventor fills in the template
• Attorney reviews and revises
• RISK: scope of protection
• May be a suitable compromise
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14. © 2020 Knobbe Martens
Strategy #2: Provisional Applications
• Not examined: Secures place in line up to 1
year
• Less expensive: government filing fee $280
• Informal: hand sketch, powerpoint slides, etc.
• RISK: only get “credit” for the detail you
include
• “Credit” = priority
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15. © 2020 Knobbe Martens
Strategy #2: Provisional Applications
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Provisional
Application
Non-
Provisional
Application
12 months MAX between provisional(s) and non-provisional(s)
Non-
Provisional
Application
Provisional
Application
Non-
Provisional
Application
Non-
Provisional
Application
2020
2021
2020
2021

16. © 2020 Knobbe Martens
Strategy #2: Provisional Applications
• File “follow-on” provisional(s)
when budget increases
• “Roll up” all provisionals filed
within one year into “non-
provisional” application
• File 6 provisionals for price of
1 non-provisional (USPTO
filing fees)
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Non-Provisional Application
Provisional
Application
#2
Provisional
Application
#1
Provisional
Application
#3
May 2020
Dec. 2020
May 2021
Mar. 2021

17. © 2020 Knobbe Martens
Strategy #3: “Omnibus” Application
• Include multiple inventive aspects in single, “omnibus” application
• File continuation applications later when budget increases
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Continuation
#1
Omnibus
Application
Continuation
#2
Continuation
#3
Omnibus
Application
Continuation
#1
Continuation
#2
Serial
Filings
Parallel
Filings
2020
2021
2022
2020
2021

18. © 2020 Knobbe Martens
Strategy #4: PCT “Holding Pattern” (first filing)
• File international
“PCT” Application
• Choose inexpensive
country for search
(Russia: ~$700 vs. US:
~$2000)
• RISK:
⎼ 30 months from
earliest priority
⎼ PCT includes most,
but not all, developed
countries
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Holding Pattern: ~30 Months
File PCT
Application as
FIRST filing
Enter National
Phase
(U.S., Europe,
Japan, Korea,
China, etc.)
May 2020 ~Nov. 2022

19. © 2020 Knobbe Martens
Strategy #5: Consider Trade Secret Protection
• Protects commercially-valuable secret
• No government filing or fee – if stolen,
sue in court
• Must take reasonable measures to
keep secret
• Non-disclosure or confidentiality
agreements, password protection, etc.
• RISK: No protection against reverse-
engineering or independent development
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PART III:
MAINTAINING IP
PROTECTION

21. © 2020 Knobbe Martens
Strategy #6: Delay Examination with Extensions
• U.S. extensions
• Typically automatic – extension fee due with response
• RISK: loss of patent term; not all actions extendable
• Outside U.S.
• Extend time for Office Action responses (typically
nominal fee)
• Defer examination for national phase entry
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Strategy #7: Suspend Examination with RCE
• Request for Continued Examination (“RCE”)
• Suspend action up to 3 months
• RISKS:
• Must be after “Final” Office Action
• Fee – currently 650/1300 USD for 1st RCE
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Strategy #8: Narrow Claim Drafting
• Amend the claims to
be narrow
• Higher likelihood of
allowance
• Reduces rounds of
negotiation with
Examiner
• RISK: design-around
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CLAIM ALL
THESE
FEATURES

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Strategy #9: Narrow claims on Feature of Value
• “Smallest stealable unit”
• What must be copied to
practice invention?
• Direct “narrow” claims to
that feature
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LONG, DETAILED
CLAIM FOCUSED
ON THIS FEATURE

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Strategy #10: Picture Claim
• “Picture Claim”
• Very detailed claim,
covers product
• Lower risk of invalidity
• Higher risk of design-
around
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CLAIM
MOST/ALL
FEATURES

26. © 2020 Knobbe Martens
Strategy #11: Placeholder Continuation
• File “placeholder”
continuation without fees
• Pay filing fees later
when budget increases
(~7 mo.)
• Allow pending
application to go
abandoned
• RISK: pending application
must be in “good standing”
• e.g., no required
extension fees unpaid!
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(Abandoned)
Pending
Application
Continuation
Application
CONTINUATION
FILED PRIOR TO
ABANDONMENT

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Strategy #12: “Consolidation” Continuation-In-Part (CIP)
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Pending
Application #1
CIP
Application
Continuation
#1
Pending
Application #2
Pending
Application #3
Continuation
#2
Continuation
#3
2020
2021
2019

28. © 2020 Knobbe Martens
Strategy #13: Consolidation CIP (Serial Continuations)
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Pending
Application #1
CIP
Application
Continuation #2
Pending
Application #2
Pending
Application #3
Continuation #1
Continuation #3
2020
2021
2019
2022
2023
CONTINUATIONS
FILED SERIALLY

29. © 2020 Knobbe Martens
Strategy #12-13: “Consolidation” CIP
• Consolidate multiple, related pending
applications into single “continuation-in-
part” (CIP)
• Option: File “placeholder” CIP w/o filing fees
• File continuations from CIP later when
budget increases
• RISK:
• CIP requires “substantial portion” of parent
application
• Need at least one common inventor
• Ensure clear priority date for claims in later
continuations
• Address ownership/assignment issues
• Possible reduced patent term

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Strategy #14: PCT “Holding Pattern” (claiming priority)
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12 Months ~18 Months
File PCT
File National
Phase (in U.S.,
China, etc.)
Filed
Provisional
May 2019 May 2020 ~ Nov. 2022

31. © 2020 Knobbe Martens
Strategy #15: PCT à U.S. with Deferred Filing Fees
• Enter US national phase with only national
stage fee
• File bypass “placeholder” continuation
application without paying filing fees
• Unpaid fees will be due later (~ few months)
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32. © 2020 Knobbe Martens
Strategy #16: Delay Maintenance Fee for Issued Patent
• Use 6 month “freebie” window
• Pay later with surcharge
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Maintenance Fee Due
Freebie
Window
Surcharge
Window
6 mo. 6 mo.

33. © 2020 Knobbe Martens
Disclaimers
• Consult with legal counsel before implementing these strategies!
• This presentation constitutes an educational and informational presentation of
general IP law and should not be construed as individualized legal advice or
representation.
• The presentation of these materials does not establish an attorney-client
relationship.
⎼ Representation can be initiated only upon completion of our standard new
client/new matter process, including completion of a conflicts check,
execution of an engagement agreement and payment of any applicable
retainer.
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34. Tom Cowan
tom.cowan@knobbe.com
858-707-4000