Diamond
Sponsors:
Platinum
Sponsor:
Gold
Sponsor:
Presented
By:
Leveraging IP to Impact
Shareholder Value
October 3, 2013
...
Background
 Today’s Shareholder expectations
 Strategic IP planning is a continual and evolving process
 Multi-discipli...
Understanding the Portfolio
 What do you own?
 What does it cover?
 Where is it covered?
 Map the IP to product lines
...
Understanding the IP Landscape
 Competitors
 University Research
 Prior Art
 Cites to Your IP
 Technology/Industry Tr...
Understanding the Legal Landscape
 America Invents Act (AIA)
 Adopting to the first-Inventor-To-File system
 Offensive ...
Applying Revenue Tools
 Pruning the portfolio
 Licensing opportunities
 Foreign filing ROI
 Competitive scanning
 Tra...
Cost Savings Opportunities
 Prune the portfolio with emphasis on foreign patents/applications
 Annuities:
• Annual up-fr...
Best Practices
*Edison in the Boardroom, J. Davis & S. Harrison, Wiley/Anderson, 2001
Defensive
Cost Control
Profit Center...
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10 30 am- leveraging ip to impact shareholder value

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10 30 am- leveraging ip to impact shareholder value

  1. 1. Diamond Sponsors: Platinum Sponsor: Gold Sponsor: Presented By: Leveraging IP to Impact Shareholder Value October 3, 2013 • Bonita Lewis Bell: Vice President, Deputy General Counsel – Terex • Courtenay Brinckerhoff: Partner – Foley & Lardner LLP • Kelly Burris: Managing Shareholder – Brinks Hofer Gilson & Lione • Alyssa Harvey Dawson: Vice President and Associate General Counsel, Global Intellectual Property – Harman International
  2. 2. Background  Today’s Shareholder expectations  Strategic IP planning is a continual and evolving process  Multi-disciplined  Training/Awareness
  3. 3. Understanding the Portfolio  What do you own?  What does it cover?  Where is it covered?  Map the IP to product lines  Costs • Where are the dollars currently being spent?
  4. 4. Understanding the IP Landscape  Competitors  University Research  Prior Art  Cites to Your IP  Technology/Industry Trends • Industrial Designs • Additive Manufacturing
  5. 5. Understanding the Legal Landscape  America Invents Act (AIA)  Adopting to the first-Inventor-To-File system  Offensive and defensive Impact of post grant review  Patentable Subject Matter – CLS Bank, Myriad/Prometheus  Treatment of Standards Essential patents  FTC Scrutiny Of Patent Litigation Settlements - FTC v. Actavis  First Sale Doctrine - Kirtsaeng v. John Wiley & Sons  Impact of agreements - Already v. Nike, Medtronic v. Boston Scientific  Design Patents - Hague Agreement  Foreign IP protection and enforcement  EPO Unitary Patent
  6. 6. Applying Revenue Tools  Pruning the portfolio  Licensing opportunities  Foreign filing ROI  Competitive scanning  Trade journals, regular prior art searching, trade shows  Charitable donations  IP bonds  IP auctions  Acquisition of IP  Patent marking  IP mining  In-house training
  7. 7. Cost Savings Opportunities  Prune the portfolio with emphasis on foreign patents/applications  Annuities: • Annual up-front approval • Move in-house for issued IP  Coordinated international patent prosecution  Leveraging patent office initiatives • e.g., PPH  Lean claim drafting  Leveraging volume  Alternative fee arrangements  In-house activities
  8. 8. Best Practices *Edison in the Boardroom, J. Davis & S. Harrison, Wiley/Anderson, 2001 Defensive Cost Control Profit Center Integrated Visionary Visionary: Anticipates technological revolution and actively seeks to position company as leader Integrated: IP activities are integrated into other company functions, similar to quality programs; focus is on the process, not just IP Profit Center: Generation of revenue, major change in company attitude, transformation from legal asset to business asset Cost Control: Reduce costs of filing and maintaining Defensive: Stockpiling patents, shielding from litigation
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