AIPLA AI and iP Workshop: Building Successful IP Portfolios for AI Inventions
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Panel of in house counsel on topic of best practices for managing and growing machine learning innovation
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AIPLA AI and iP Workshop: Building Successful IP Portfolios for AI Inventions
- 1. CONFIDENTIAL © Copyright Baker Botts 2019. All Rights Reserved. Building Successful IP Portfolios for AI Inventions AI and IP Workshop/Tech Road Show Paul Ragusa November 12, 2019
- 2. BAKER BOTTS Speakers Dennis Duncan Senior IP Counsel, Dolby Labs Eric Sutton Managing Counsel for IP, Oracle Rosa Yaghmour Head of IP, Loon LLC Rosa Yaghmour Head of IP, Loon LLC Andrew Whitehead Senior Patent Counsel, Genentech 2
- 3. BAKER BOTTS Topics Collaborating With Your Organization to Map IP Strategy to Business Strategy Selecting Which IP Asset to Cover An AI-related Innovation Managing an AI-Related IP Portfolio & AI Personnel 3
- 5. COLLABORATING WITH YOUR ORGANIZATION TO MAP IP STRATEGY TO BUSINESS STRATEGY 01
- 6. BAKER BOTTS Collaborating With Your Organization to Map IP Strategy to Business Strategy • Mechanics of Submission of Ideas for IP Protection – Who should be involved? – What information should be considered? – Important issues to address – Are changes to invention disclosure forms needed for AI-related inventions? • AI as Part of Business Strategy – Unknown consumer results – Development costs – Practical considerations 6
- 7. SELECTING AN AI ASSET WHICH IP PROTECTIONS ARE RIGHT FOR YOU? 02
- 8. BAKER BOTTS Protecting your AI Assets • Patents – Protect implementation of ideas and functions – Protection against others even if others independently develop – Term of 20 years from filing date – Collect damages and enjoin others • Trademarks – Public facing aspect of AI – Can add value if TM associated with an AI invention 8
- 9. BAKER BOTTS Protecting your AI Assets • Copyright – Protect expression of ideas. – Inexpensive, Long Term. – Uncertainty regarding inventorship/ownership of AI • Naruto v. Slater suggests that human must be author • Trade Secrets – Can provide protection where Patents are lacking • Protection of AI learning datasets? – Might be difficult to keep – Can be cheaper than a patent • Need infrastructure to maintain secrecy 9
- 10. MANAGING AI ASSETS HOW TO USE YOUR AI ASSET TO MAXIMIZE VALUE 03
- 11. BAKER BOTTS Managing an AI-Related IP Portfolio • Selecting Outside Counsel – Need to ensure high quality work • Identifying the Goals of the IP Portfolio – Align the IP portfolio with the overall business plan • Pruning the IP Portfolio – Evaluate the strategic value of IP • Managing AI Personnel – What happens when an inventor or expert leaves? 11
- 12. AUSTIN BEIJING BRUSSELS DALLAS DUBAI HONG KONG HOUSTON LONDON MOSCOW NEW YORK PALO ALTO RIYADH SAN FRANCISCO WASHINGTON bakerbotts.com ©Baker Botts L.L.P., 2019. Unauthorized use and/or duplication of this material without express and written permission from Baker Botts L.L.P. is strictly prohibited. Excerpts and links may be used, provided that full and clear credit is given with appropriate and specific direction to the original content.