Successfully reported this slideshow.

Building an Effective IP Portfolio without Breaking the Bank - John Sadler, Cervel Neurotech


Published on

Building an Effective IP Portfolio without Breaking the Bank - Presentation by John Sadler, Vice President, R&D, Cervel Neurotech delivered at the marcus evans Medical Device R&D Summit June 2014, held in Las Vegas

Published in: Business
  • Be the first to comment

  • Be the first to like this

Building an Effective IP Portfolio without Breaking the Bank - John Sadler, Cervel Neurotech

  1. 1. Managing an IP Portfolio Without Breaking the Bank John Sadler June 2014
  2. 2. Before we beginBefore we begin… I am not an attorneyI am not an attorney I do have a great deal of relevant experience in multiple markets The ideas in this presentation should help you work ff ti l ith IP l t l th tmore effectively with IP counsel – not replace that interaction When in doubt, consult your IP attorney
  3. 3. GoalsGoals Improve patent portfolio cost-effectivenessImprove patent portfolio cost effectiveness Evaluate and tune a patent portfolio Manage an invention pipelineManage an invention pipeline
  4. 4. Review: What is Intellectual Property?Review: What is Intellectual Property? Patents Trademarks Copyrights Trade SecretsPatents, Trademarks, Copyrights, Trade Secrets Not just patents! You have options. The Patent Bargain: Disclose your invention in exchange for a limited monopoly IP is an offensive weapon A Sword, not a Shield If you rest on your rights, you may lose them IP d t di tl t t f l it ll ti fIP does not directly protect you from lawsuits or allegations of infringement
  5. 5. More ReviewMore Review P t t t ifiPatents are country-specific Patent Cooperation Treaty provides some commonality “Defensive value” If there is a credible threat of countersuit or invalidationIf there is a credible threat of countersuit or invalidation A filed patent or portfolio has some deterrent value In a crowded field, claim scope and validity tend to suffer Some industries thrive on cross-licensing
  6. 6. What makes a patent valuable?What makes a patent valuable? V lid l iValid claims …that result in a working invention,g …that have (or will have) market value somewhere, …that are not easy to work around, for which infringement can be detected…for which infringement can be detected
  7. 7. What makes a claim valid?What makes a claim valid? S t d b th t hiSupported by the teachings Clearly states the nature of the inventiony Not anticipated by prior art Not previously published or disclosed Equitable conduct on the part of the claimantsEquitable conduct on the part of the claimants Note: SCOTUS has been active on this topic lately
  8. 8. Patent / App EvaluationPatent / App Evaluation Criterion RatingCriterion Rating Do we practice this invention? How likely are we to practice in future?y Does a competitor practice this invention? How likely is a competitor to practice in future? How easy is it to detect infringement? How sure are we that the claimed invention works? How hard is it to work around the claims? How broad are the claims? H h d l d h f thi ?How much coverage do we already have for this? (Issued patent) Is the patent valid? (Issued patent) How long until expiration?(Issued patent) How long until expiration?
  9. 9. Where to FileWhere to File Where the markets areWhere the markets are Market = Need + Ability to Pay Where competitors have a marketp Where competitors manufacture or have filed Where investors are located or want you to fileWhere investors are located or want you to file File your best patents more broadly than the weaker onesones Only the US and AU allow “method of treating patient” claims
  10. 10. When to FileWhen to File When potential claims have valueWhen potential claims have value Be cautious about speculative claiming – invest in doing the research insteadresearch instead Prior to public disclosure or offer for sale In the US you have 1 year grace Not so OUSIn the US, you have 1 year grace. Not so OUS. File provisional apps early and update them!
  11. 11. Alternative to Filing PublishAlternative to Filing - Publish Consider publication when:Consider publication when: You need freedom to operate It’s difficult to detect infringementg Claim space is crowded (potential claims are narrow) PS: Cheapest way to establish a priority date!
  12. 12. Alternative to Filing – Trade SecretAlternative to Filing – Trade Secret Consider keeping secret if:Consider keeping secret if: Infringement is hard to detect Invention is difficult to claim in desired locales Desired locales do not respect IP law Invention is hard to reverse-engineer Notes M t b t hMust be secret everywhere For trade secret protection to apply, you must have supporting evidence of efforts to control the secretpp g
  13. 13. Prosecution CostProsecution Cost US utility filing typically costs $30K-$50K to issueUS utility filing typically costs $30K $50K to issue Much less if you write and prosecute yourself More if you are a “large entity”y g y And then there are maintenance fees… Foreign filings may cost 2x more “Method of treating human patient” claims are not i d t id th US d AUrecognized outside the US and AU
  14. 14. Prosecution CostProsecution Cost Consider preparing and filing your own provisionalConsider preparing and filing your own provisional application ($100 plus your time) Many countries allow cost to be deferred US provisional application – 1 year, no examinationp pp y Utility model (many countries including CN, EC, Australia) One way to defer cost in US and get a filing date: US Provisional PCT national phase
  15. 15. Ways to Waste MoneyWays to Waste Money Prosecuting low-value claimsProsecuting low value claims Inventor too hands-off Prosecution delays caused by: Fail re to search prior art diligentlFailure to search prior art diligently Speculative claiming – not enough research to know what is critical to making it work Failure to grasp and clearly describe what is novel Filing in the wrong localesFiling in the wrong locales Where there is no market for the invention Where IP law is not enforced vigorously
  16. 16. More Ways to Waste MoneyMore Ways to Waste Money Inequitable conductInequitable conduct Omitting inventors Failing to notify PTO of relevantg y prior art P fid ti litPoor confidentiality practices Disclosing invention withoutDisclosing invention without NDA protection Poor NDA hygiene Review marketing materials!
  17. 17. Summary: Patent Portfolio ManagementSummary: Patent Portfolio Management Evaluate patents and applications as a groupEvaluate patents and applications as a group Rank according to value criteria Review periodicallyp y Defer prosecution to give lower value ideas time to mature Always look at new opportunities in portfolio context Focus money and effort on the most valuable applications Minimize costMinimize cost Use provisional or utility model apps where possible Have inventor write as much of the disclosure as possibleHave inventor write as much of the disclosure as possible Keep inventor involved in utility app drafting process Choose foreign filing locales carefully
  18. 18. What is an invention pipeline?What is an invention pipeline? A deliberate way to foster inventions leading toA deliberate way to foster inventions leading to valuable patents Relies on two-way communication: What fields are under-claimed What ideas fit into valuable fields P i it b i i htf l b tPrerequisite: be insightful about The needs and problems of the market Your own and your competitors’ patent positionsYour own and your competitors patent positions Technical capabilities of your organization
  19. 19. Invention PipelineInvention Pipeline
  20. 20. Invention Pipeline – how it worksInvention Pipeline – how it works Analyze market needsAnalyze market needs Identify key problems and opportunities How could the existing market be disrupted?g p These should be focus areas for inventing and patenting Understand competitive IP Over-claimed areas – concentrate on freedom to operate Under-claimed areas – invent here if possible Id tif i tf liIdentify gaps in your portfolio Discuss opportunity areas and rationale with team M k i t f d titi IPMake inventors aware of own and competitive IP Give filing priority to high-value disclosures
  21. 21. Invention Pipeline NotesInvention Pipeline Notes Look for claims in Review periodically:Look for claims in supporting technologies! Safety Review periodically: Your portfolio status Competitive IPy Usability Calibration / accuracy Competitive IP FTO threats Inventions in process Energy management Manufacturing Accessories Lab notebooks Accessories Patient Compliance
  22. 22. Best practicesBest practices A patent portfolio is an investment portfolioA patent portfolio is an investment portfolio Compare alternatives Re-evaluate periodically Be aware of competitive IP, Freedom To Operate Search periodically (this has gotten easier) Maintain a tracking sheet with your attorneyMaintain a tracking sheet with your attorney Use the attorney-client privilege correctly Good discoverable document hygieneGood discoverable document hygiene Good NDA hygiene Good lab notebook practicesp Have a document retention policy And audit periodically
  23. 23. Final ThoughtsFinal Thoughts A patent portfolio is mainly a business tool, not anA patent portfolio is mainly a business tool, not an inventor recognition tool Maintain a tracking sheet l l t di l i t tAlways evaluate disclosures in context If you sit on your rights you may lose themIf you sit on your rights, you may lose them Label your product with applicable patent numbers If you are sure of infringement, you must act “Just because you’re paranoid doesn’t mean they aren’t after you”aren t after you A strong portfolio doesn’t mean that you won’t get sued Maintain current FTO arguments