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10 Strategies Startup Companies Need to Know to Aggressively Build a Patent Portfolio

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Knobbe Martens Partner Ron Schoenbaum hosted an hour-long seminar on September 29 at Plug & Play Tech Center in Sunnyvale, CA. He covered the following topics:

- How patent rights are commonly lost
- 10 strategies startup companies need to know to aggressively build a patent portfolio

Published in: Law
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10 Strategies Startup Companies Need to Know to Aggressively Build a Patent Portfolio

  1. 1. knobbe.com Strategies for aggressively building a patent portfolio Ron Schoenbaum September 29, 2016 Plug and Play Tech Center – Silicon Valley
  2. 2. 2© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. Topics • How are patent rights most commonly lost? • Ten strategies for aggressively building a patent portfolio
  3. 3. ©2012 Knobbe Martens, Olson & Bear, LLP all rights reserved.© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 3 HOW ARE PATENT RIGHTS MOST COMMONLY LOST?
  4. 4. 4© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. How are patent rights lost? 1. Failure to recognize invention before bar date – Inventors unaware of what can be patented – Inventors consider invention to be obvious – Invention difficult to ascertain (e.g., novel combination of old elements or steps)
  5. 5. 5© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. How are patent rights lost? 2. Inventors lack motivation to participate in patent process – Inventors do not like working with patent counsel to prepare patent application – Inventors are morally opposed to patents
  6. 6. 6© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. How are patent rights lost? 3. Company “accidentally” discloses product details before patent application filed. Examples: – Member of marketing department discloses details of new product to potential customers – Company releases beta version of product without NDA
  7. 7. 7© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. How are patent rights lost? 4. Contractual deficiencies – Joint development agreement lacks favorable IP ownership provision – Inventors have not executed an appropriate invention assignment agreement – “I agree to assign, and do hereby assign, …”
  8. 8. ©2012 Knobbe Martens, Olson & Bear, LLP all rights reserved.© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 8 TEN STRATEGIES FOR AGGRESSIVELY BUILDING A PATENT PORTFOLIO
  9. 9. 9© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 1. Provide a simple idea submission form • On company intranet • Simple form that can be completed in 5 to 15 minutes • Periodically email link to developers with reminder message
  10. 10. 10© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 2. Conduct periodic “brainstorming sessions” • 1-hour sessions with groups of 5 to 15 developers • Not limited in scope to ideas currently being implemented • No idea is too basic to be considered • Conduct at least once per year
  11. 11. 11© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 3. Educational seminars (online or in-person) • Conduct once every 1 to 3 years • Topics: – What can be patented – How to document invention and submit for consideration – Why patents are important to the company – How not to deal with patents of others
  12. 12. 12© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. Responsibilities: • Evaluate each identified invention based on various criteria (see next slide) • For each invention, decide whether to (a) file regular patent application (b) file provisional application (c) do nothing (d) create defensive publication (e.g., using IP.com) 4. Form a patent committee
  13. 13. 13© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 4. Patent committee (con’t) • Typical criteria considered: – Will infringements be detectable? – Is invention important to company and competitors? – Will the technology become obsolete in a few years? – Likelihood of getting a patent
  14. 14. 14© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 5. Implement a patent incentive program • $1000 to $3000 per inventor upon filing (typical) • Additional award upon issuance (if still employed)
  15. 15. 15© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. • Review (or create) standard employee agreement, consulting agreement, and company NDA • Review (or create) internal procedures for making disclosures to, and entering into agreements with, other entities • Review any existing license and joint development agreements 6. Conduct an IP audit
  16. 16. 16© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 7. Reassess pending applications • Compare pending claims to activities of company and competitors – Upon receiving an initial Office Action (at least) • Revise claims, if appropriate • Mine patent disclosure for unclaimed features
  17. 17. 17© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 8. Keep a continuation pending • At least for most important inventions • Enables patent owner to: – Pursue additional claims – Eliminate infringement loopholes – Have newly discovered references considered – Eliminate problems caused by new case law • Puts company in much stronger position for licensing negotiations and litigation
  18. 18. 18© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 9. Consider Prioritized Examination (PE) • Cost (PTO fee): $4,000 for large entities, $2,000 for small • PTO issues first Office Action roughly 2 to 5 months from filing • PTO goal of “final disposition” within 12 months • Prompt responses to Office Actions required or else priority status will be lost • Unlike Accelerated Examination program, no prior art search is needed, and no Examination Support Document needs to be prepared.
  19. 19. 19© 2016 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 10. Buy patents and applications • Via patent auction or broker • Directly from patent owners
  20. 20. knobbe.com Orange County San Diego San Francisco Silicon Valley Los Angeles Seattle Washington DC Ron Schoenbaum ron.schoenbaum@knobbe.com 949-760-0404 Questions?

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