Understanding And Obtaining Patents And Managing Costs

Joint Meeting of NE ACerS and iMAPS-NE March 24, 2010, Marlborough, Massachusetts , , g , Understanding and Obtaining Patents and Managing Costs - Robert J Sayre Esq J. Sayre, Esq. Registered Patent Attorney WIPO Patent-Drafting Instructor Patent- www.mxlegal.com

Patents afford an “exclusive” property right www.mxlegal.com

Advantages Provided by Patents pricing power financing g licensing / cross‐licensing Defensive www.mxlegal.com

Patentable Subject Matter new compositions new compositions new products or new products or new processes and structures components software business methods www.mxlegal.com

Patent Filing Phase Diagram g g (non‐provisional) www.mxlegal.com

Patenting Process – Managing Costs Typical lifetime cost of US patent: ~$30k Maximize the value of your investment: • managing counsel i l – ask for cost estimate – face‐to‐face interaction promotes efficiency – monitoring delegation of your work it i d l ti f k • selective outsourcing – non‐sensitive administrative tasks; – beware of export control laws • efficiencies of electronic/paperless practice, automated software and web resources • strategic choices – e.g., use of Korean IP Office for PCT search will save at least about $1k. www.mxlegal.com

Changes at the USPTO www.mxlegal.com

Securing a Patent Allowance g Provide examiner with a bridge to allowance • Leverage favorable PCT Search Report • Examiner interviews – build understanding, trust and personal connection • Provide compelling portrayal of invention, client and inventors to elicit examiner interest and empathy elicit examiner interest and empathy www.mxlegal.com

New USPTO Director David Kappos • Puts “Patent” back in USPTO • Brings industry experience • Undoing previous damage U d i i d • New initiatives for accelerated examination • Promoting uniform and compact examination to remove “disfunctional incentives” for rejecting patent applications: – promoting communication among all interested parties – eliminating “garbage” rejections and objections, and eliminating garbage rejections and objections, and – changing examiner count system & performance appraisal www.mxlegal.com

Global Patent Protection 1978: Patent Cooperation Treaty (now over 140 1978: Patent Cooperation Treaty (now over 140 member states) administered by WIPO www.mxlegal.com

PCT Member States (Member states shown in blue) www.mxlegal.com

PCT national stage (or direct foreign filings) Customers Competitors Manufacturing www.mxlegal.com

http://www.mxlegal.com	470
http://www.slideshare.net	1
http://webcache.googleusercontent.com	1
http://translate.googleusercontent.com	1

Understanding And Obtaining Patents And Managing Costs

by Robert J. Sayre on Mar 26, 2010

Accessibility

Categories

Tags

Upload Details

Usage Rights

4 Embeds 473

Statistics

Understanding And Obtaining Patents And Managing Costs — Presentation Transcript