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All About Intellectual Property
 

All About Intellectual Property

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All About Intellectual Property, the law, and some of the strategy and business considerations behind developing and leveraging intellectual property in business

All About Intellectual Property, the law, and some of the strategy and business considerations behind developing and leveraging intellectual property in business

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  • When fire strikes, what you need to get out quick; with this invention all you need to do is don this special hat and shoes, and jump out the nearest window; the hat deploys a special parachute (hard on the chin and neck), and the shoes deploy special shock absorbers to cushion your landing
  • For those of you with pets; this innovation will solve all of your problems with those floppy pet ears ending up in the food bowl; doggie ear tubes
  • For those thrill seekers among us, this is sure to be the latest rage; manual waterskiing; simply don these specially designed water skis, and paddle till you drop; sure to be a thrill a minute – and look at the great posture and muscle tone our demonstrator has developed
  • Back to pets; every pet owner dreads that nightly ritual of having to pet their pet, right?; Well here is the solution; An automated pet “petter”! Now you no longer have to touch that grubby Fido!
  • And, for the cat lovers amongst us, you surely recognize the importance of regular exercise for Tabby. But, surely you don’t want to have to lift yourself from your reclined position!; Now there’s a solution, and its no further away than your neighborhood office supply store; simply use your laser pointer to create a dot of light on virtually any surface, and watch your cat chase it to his or her heart’s content; if you are really good, you can even get your cat to run into the walls – who wouldn’t pay big bucks for this stuff, and it’s all patented!
  • Here’s one for the women; you all surly have experienced that crisis that arises when you rush to get ready for a formal occasion and realize that you have a run in your pantyhose; well here’s a solution; these pantyhose have an extra leg!; when you notice a run, simply slip off the leg with the run, and slip on a new one; the damaged leg folds discretely into a pocket located at the wearers crotch
  • And, for those kissers among you; next time you have the urge to make out, but don’t really know where your partner’s lips have been; practice protected smacks with this kissing shield; all of the same romance without all the risk
  • And one of my favorites; we all have experienced that biological crisis during a log road trip; do I stop at the next rest stop or gas station for a biological break, costing precious time, or can I make it a few more exits down the freeway; with this invention you don’t have to decide; the “auto toilet” lets you relieve yourself without even slowing down; only problem is, do you wear pants while you drive? These innovation are all the subjects of real patents paid for by their inventors, and granted by the US Patent and Trademark Office
  • Perhaps we need to revisit our definition of “success”
  • The patent business triangle The area within the triangle represents profit potential, and each of the legs represents an essential part of maximizing profits from patents First, there must be someone willing to pay for your solution – there must be market demand – there must be a problem that someone is willing to pay sufficiently to have solved Second, you must have a patentable technological solution to the problem – the patent protection available must be sufficient to distinguish, in a way of interest to the market, your solution from alternative competing solutions Third, you must have the business capabilities to capitalize on the solution you have developed to the problem; you must have the ability to connect your solution with the marketplace at a price the market will bear; you may need the ability to obtain raw materials, manufacturing, product transportation, at prices that allow you to meet the consumers price tolerance, but still allowing for a profit for you; you will need human resources and capital resources.
  • Re 10. What level of abstraction is appropriate between basic scientific principle, and detailed technological solution? Re 9. What are your competitors doing? Re 5. Are the materials unique/specially made, are they processed in a unique way?
  • Relevant timeframe Ex. A business may not benefit when obtaining patent protection for an invention that will likely have only an immediate and short market lifetime Difficulty of implementation Keep in mind that there are barriers to entry other than patentability Detectable usage It is hard to police what you can’t see Ease of avoidance Don’t overlook the contribution of 1 patent to a portfolio, however Royalty foundation An nice cream novelty stick comprised of artificial boohoo wood. A 5% royalty for 1 million 5 cent sticks = $2,500 An nice cream novelty comprising: - a stick comprised of artificial boohoo wood; - a frozen edible substance disposed on the stick. A 5% royalty for 1 million $1 novelties = $50,000 Geographic application Consider where you need, and don’t need, a patent to support your business goals Consider differences in allowed subject matter Infringer profile How well does the invention/patent serve to stop the competition? Standards use Standards and patents are an enormously important mix to any business that must live with standards Portfolio fit Inventions should not be viewed in the abstract and without context, and that includes considering the way a given invention fits into an existing or planned portfolio Strategic fit How relevant is the invention to the larger overall picture? Use by others This is the “Holy Grail” of subjective inquiries; this is where the buck starts
  • Relevant timeframe Ex. A business may not benefit when obtaining patent protection for an invention that will likely have only an immediate and short market lifetime Difficulty of implementation Keep in mind that there are barriers to entry other than patentability Detectable usage It is hard to police what you can’t see Ease of avoidance Don’t overlook the contribution of 1 patent to a portfolio, however Royalty foundation An nice cream novelty stick comprised of artificial boohoo wood. A 5% royalty for 1 million 5 cent sticks = $2,500 An nice cream novelty comprising: - a stick comprised of artificial boohoo wood; - a frozen edible substance disposed on the stick. A 5% royalty for 1 million $1 novelties = $50,000 Geographic application Consider where you need, and don’t need, a patent to support your business goals Consider differences in allowed subject matter Infringer profile How well does the invention/patent serve to stop the competition? Standards use Standards and patents are an enormously important mix to any business that must live with standards Portfolio fit Inventions should not be viewed in the abstract and without context, and that includes considering the way a given invention fits into an existing or planned portfolio Strategic fit How relevant is the invention to the larger overall picture? Use by others This is the “Holy Grail” of subjective inquiries; this is where the buck starts
  • Know what you need: “ What” you need is really a 3 dimensional inquiry What subject matter does your portfolio need to support your business needs and plans? When does your business need this subject matter? Where does your business need this subject matter? Acquire what you need: Acquiring what you need Focused patent preparation and prosecution Cost guidelines/goals Quality guidelines/goals Matters-of-form guidelines/goals Temporal guidelines/goals Divest what you don’t need: Divesting what you don’t need Do nothing Abandon the asset Sell the asset License the asset (core versus non-core) Donate the asset

All About Intellectual Property All About Intellectual Property Presentation Transcript

  •  
  • “ All About Intellectual Property” Thomas F. Lebens Managing Partner, West Coast Operations Fitch Even Tabin & Flannery LLP
  • Overview
    • Introduction
    • What is intellectual property?
    • What makes for success?
    • Examples of “success”
    • Success revisited
    • Conclusions
  • What is a patent attorney?
    • Licenses
      • California Bar Examination
      • Patent Bar Examination
    • Experience
      • Scientific or Engineering Experience
      • Legal Experience
        • Clerkships
        • Attorney
  • What’s a patent attorney?
    • Education
      • Before college
        • Math
        • Science
        • Reading, Writing, Editing
        • Public Speaking
      • College
        • Undergraduate degree in hard science or engineering (4+ years)
        • Doctor of Jurisprudence (3+ years)
  • What is intellectual property?
    • Patents
      • Utility Patents
      • Design Patents
    • Trademarks
    • Copyrights
    • Trade secrets
  • Legal Regime
    • U.S. Constitution
    • Federal Statute (U.S. Code)
    • Federal Regulations
    • Federal Administrative Procedures
    • Case law
  • U.S. Constitution
    • The U.S. Constitution
      • Art. 1, Sec. 8, Cl. 8 “The Congress shall have power . . . To promote the progress of science and useful arts , by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries .
      • Art. 1, Sec. 8, Cl. 3 “The Congress shall have power . . "To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes“
      • State Constitution
  • What is a trade secret?
    • Secret formulae, processes, products, software, plans, designs, specs, pricing, devices, R&D information, business information.
    • Right to exclude others from improper obtaining, disclosure or use.
    • State law
  • What is a copyright?
    • Works of authorship fixed in a tangible medium of expression
    • Life of author plus seventy years
    • Right to
      • Copy (prevent substantial copying)
      • Prepare derivative works
      • Distribute copies
      • Perform
      • Display
      • Digitally transmit
    • Federal law
  • What is a trademark
    • Words, names, symbols, devices, sounds, smells used to identify source or origin
    • Must be used in commerce (interstate commerce for federal registration)
    • Right and obligation to prevent others from using a trademark likely to cause confusion, mistake or deception amongst the relevant consumers
    • State and Federal law
  • What is a design patent?
    • Ornamental designs for article of manufacture
    • Right to exclude others from making using or selling for a period of 14 years from the date of grant
    • Federal law
  • What is a utility patent?
    • Structure or process made by a person
    • Right to exclude others from making, using, or selling the invention for 20 years from the patent filing date filing date
    • Federal law
  • Legal Regime
    • U.S. Constitution
    • Federal Statute (U.S. Code)
    • Federal Regulations
    • Federal Administrative Procedures
    • Case law
  • U.S. Constitution
    • The U.S. Constitution
      • Art. 1, Sec. 8, Cl. 8 “The Congress shall have power . . . To promote the progress of science and useful arts , by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries .
  • Federal Statute
    • Statutory subject matter (35 U.S.C. § 101)
      • Anything under the sun made by a person
      • Business Methods – State Street Bank case
    • Useful (35 U.S.C. § 101)
    • Novel (35 U.S.C. § 102)
      • Narrowed in 2000 to include more “secret” prior art
    • Non-obvious (35 U.S.C. § 103)
    • Written description, enablement, best mode (35 U.S.C. § 112, first paragraph)
  • Federal Statute
    • Statutory subject matter
      • Product, device, apparatus, structure
      • Method, process for using, or for making
      • Article of manufacture
      • Composition of matter
  • Federal Statute
    • Useful
      • No practical consideration need be given to the "utility" requirement in relation to common mechanical or electrical devices. However, some showing of utility may be necessary when seeking patent protection for inventions whose "real world" value may be difficult to gauge or substantiate, such as chemical and pharmaceutical compounds. See, for example, Brenner v. Manson , 383 U.S. 519 (1966), noting that "[a] patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion. ‘[A] patent system must be related to the world of commerce rather than to the realm of philosophy. . . .’" Id. (citations omitted).
  • Federal Statute
    • Novel
      • No patent protection is available for :
        • an invention known or used by others in the U.S. prior to the date of invention by the Applicant.
        • an invention patented or described in a printed publication anywhere (U.S. or abroad) prior to the date of invention by the Applicant.
        • an invention patented or described in a printed publication anywhere (U.S. or abroad) more than one year prior to the U.S. filing date of the patent application.
        • an invention in public use in the U.S. more than one year prior to the filing date of the patent application.
        • an invention on sale in the U.S. more than one year prior to the filing date of the patent application.
  • Federal Statute
    • Non-obvious
      • In general terms, an invention is not patentable if, considering the prior art that existed at the time of invention, the invention would have been obvious to a person of ordinary skill in the art. Obviousness rejections are common during patent prosecution; however, because such rejections are somewhat subjective, they can often be overcome through persuasive argument. Secondary considerations of (1) commercial success; (2) long-felt need; and/or (3) commercial acquiescence can factor into such arguments. See Graham v. John Deere , 383 U.S. 1 (1966).
  • Federal Statute
    • “ 112” requirements
      • Written description sufficient to support claims
      • Sufficient to enable one of ordinary skill in the art to practice the invention without undue experimentation
      • Best mode of practicing the invention
  • So, what makes for a success?
    • Statutory subject matter (35 U.S.C. § 101)
    • Useful (35 U.S.C. § 101)
    • Novel (35 U.S.C. § 102)
    • Non-obvious (35 U.S.C. § 103)
    • Written description, enablement, best mode (35 U.S.C. § 112, first paragraph)
  • Federal Statute
    • Statutory subject matter (35 U.S.C. § 101)
    • Useful (35 U.S.C. § 101)
    • Novel (35 U.S.C. § 102)
    • Non-obvious (35 U.S.C. § 103)
    • Written description, enablement, best mode (35 U.S.C. § 112, first paragraph)
  • Examples of “success”
  • Examples of “success”
  • Examples of “success”
  • Examples of “success”
  • Examples of “success”
  • Examples of “success”
  • Examples of “success”
  • Examples of “success”
  • Success Revisited
    • Start with a plan
      • Business Strategy
      • Patent Strategy
    • Invention disclosure
    • Filtration of filings (management)
    • Management during prosecution
    • Management after issuance
  • Business Strategy
    • Business plan
    • Financial plan
    • Corporate development plan
    • Supply chain management plan
    • Manufacturing plan
    • Marketing plan
    • HR development plan
  • Start with a Plan
  • Intellectual Property Strategy
    • Patents (Utility/Design)
    • Trademarks
    • Trade Dress
    • Licensing
    • Know how
    • Trade secrets
    • Copyrights
  • Intellectual Capital Management
    • Know what you have (invention disclosure program)
    • Determine what you want to protect, and how (filtration)
    • Codify what you want to protect (patent)
    • Reevaluate as you protect (before & after issuance)
    • Leverage what you protect (move & connect)
  • Invention Disclosure
    • An “invention disclosure” is a document containing a description of technology sought to be patented
      • “ Invention” = legal term of art
      • Most often, inventions will be thought of by the inventor as the subject matter for the patent
  • Invention Disclosure
    • Inventors generally resist writing “invention disclosures”
      • If you ask inventors to write, you will generate fewer invention disclosures
      • Ask your legal counsel or a technical writer trained by legal counsel to write
  • Invention Disclosure
    • Fundamentally every invention can be expressed in terms of a minimum combination of elements necessary to solve a problem
      • The elements may be structural
      • The elements may be functional
  • Invention Disclosure
    • The invention lies in the novel and non-obvious elements, and/or the novel and non-obvious relationships between the elements
    • Most invention disclosures describe several “inventions”
  • What to look at?
    • Top 10 things to look for in an invention disclosure. . .
      • What are future applications for the product/process?
      • What does the next generation product look like? Last generation? Other solutions?
      • What is the most profitable point in the supply chain?
      • Are there any disadvantages to the invention? Solutions?
      • What are the materials used?
      • What are the parameters for operating, and/or making?
      • What are the inputs and outputs, which ones are necessary?
      • Who are the customers? Who will they be? What do they want?
      • Who are the competitors? Who will they be?
      • Can the invention be a structure, method of using, method of making, article of manufacture, AND composition of matter?
  • What to look at?
    • During filtration, look at . . .
      • Geography
      • Who will infringe
      • Standards
      • Business direction
      • Use by others
      • Timing
      • Complexity
      • “ Detectability”/ease of avoidance
      • Royalty basis
  • Invention Disclosure
    • Knowledge Management Database
  • Filtration of Filings
    • Patent review committee:
      • Business leadership
      • Marketing
      • Legal
      • Department advocate
    • When business, marketing, and legal agree to patent, proceed
  • What to look at?
    • During filtration, look at . . .
      • Geography
      • Who will infringe
      • Standards
      • Business direction
      • Use by others
      • Timing
      • Complexity
      • “ Detectability”/ease of avoidance
      • Royalty basis
  • What to look at?
    • Know what you need
    • Acquire what you need
      • Reactive
      • Proactive
        • Hunt internally
        • Hunt externally
        • Force the invention into existence
    • Divest what you don’t need
  • Management During Prosecution
    • Reevaluate business objectives
    • Reevaluate markets
    • Reevaluate legal
    • Filtration
  • Management After Issuance
    • Reevaluate business objectives
    • Reevaluate markets
    • Reevaluate legal
    • Filtration
  • Leverage!
    • Knowledge assets should be treated like inventory – kept moving
    • Intellectual Capital Management is about connection, not collection
    • Strategies
      • “ Productize”
      • Sell/Acquire
      • In/Out license
      • Debt/Equity
      • Grow (JV, SP, JDA, etc.)
  • Conclusions
    • Intellectual property is an important tool for American businesses to protect their intellectual capital
    • Intellectual property is a business tool – just because it’s protectable, does not mean the business should invest in protecting it
  • “ All About Intellectual Property” Thomas F. Lebens Managing Partner, West Coast Operations Fitch Even Tabin & Flannery LLP
  •