What emerging companies should be doing, right now, to build a strong patent portfolio in order to achieve their end-game.

1. Mintz Levin. Not your standard practice.
Develop a Killer Patent Strategy to
Achieve Your End-Game

2. Content
2
• The Basics
• Value/Use of Patents
• Company Goals
• Impact of Goals on Patent Strategy
• Developing A Patent Strategy (Case Study)
• Conclusion

3. The Basics
3
• IP includes: patents, trademarks, trade secrets,
copyrights, and know-how
• Trademark tip: If you plan to bring a product to
market, trademark protection will be very
important.
• Patent rights:
– Right to prevent others from practicing the
claimed invention
– NOT a right to use your own invention

4. Value / Use of Patents
4

5. What are the different uses for patents?
5
1. Offensive / Blocking: Protect your technology to prevent others from
copying your technology
2. Defensive / Leverage: Prevent others from practicing technology that
may compete with your technology by protecting improvements or
design variations; prevent competitors from improving their own
technology

6. Company Goals
6

7. What is your goal?
7
ENDGAME
BUILD
SELL
Proof of Concept /
Pre-Clinical Testing
Prototype / Clinical
Testing
Ready for Market
On Market

8. How does the End Game
Affect Your Patent Strategy
8

9. 9
How does your end-game affect your IP strategy?
Sale: Proof
of Concept
Sale:
Prototype
Sale:
Ready for
Market
Sale: On
Market
Build
Company
IP Strategy
Offensive
+
Defensive
($$$)
Offensive
($)

10. How does your end-game affect your IP strategy if
you plan to build a company?
10
• Offensive / Blocking: Blocking patents will be necessary to prevent
competitors from copying your technology. These have the highest
value.
• Defensive / Leverage: In highly competitive fields, having leverage over
your competitors will be important to prevent lawsuits, provide
opportunities to counter sue, force a license, etc. The value of having
leverage over competitors will increase as the company grows.

11. How does your end-game affect your IP strategy if
you plan to sell a company?
11
• Your IP Strategy will vary depending on WHEN
you plan to sell.
1. Sale at Proof of Concept
2. Sale at Prototype / Clinical Testing
3. Sale When Ready for Market
4. Sale When On the Market

12. 1. Sale at Proof of Concept
12
• If you are planning to exit after proof of concepts, you
should focus on building an offensive IP portfolio.
• If you are planning to exit after Prototype or pre-
clinical tests, you should broaden your IP strategy to
include some defensive strategies, focusing on
preventing others from improving your technology.
2. Sale at Prototype / Clinical Testing

13. 3. Sale When Ready for Market
13
• If you plan to sell when the product is fully tested,
approved, and ready for market, you should have a
strong offensive patent portfolio. Your defensive
patent strategy will vary depending on the target
acquirer.
– Patents that provide leverage over a competitor could be
useful in forcing a sale to the competitor or to a third
party competitor. In the event approval cannot be
obtained or trials fail, a strong defensive patent portfolio
could also provide an alternative exit. Patent Holding
companies and NPEs may focus more on defense patents
that can be enforced or licensed.

14. 4. Sale When On the Market
14
• If you plan to see after your product is on the market,
you will want to take the most aggressive IP strategy
and focus on increasing value by obtaining blocking
patents, leverage over competitor technology, and
patents that provide a source of revenue.

15. How to Protect Your Technology
15
Keeping in mind your exit strategy, what can you
do now to build a patent portfolio that meets the
end game?
PROTECT YOUR OWN TECHNOLOGY - OFFENSIVE
/ BLOCKING
• Start by looking at your technology and
considering all novel aspects
• Separate into buckets

16. Developing Your Own Patent Strategy
Let's use an example…
Nova Science device (see US 6,582,452)
16

17. US 6,582,452
17

18. Novel Aspects
18
STAPLE
 Staple configuration/shape
 Delivery of staple over locator tube
 Staple formation / device structure
used to form staple
 Affect of staple on tissue (i.e., tissue
compression, how staple interacts
with tissue)
LOCATOR TUBE
 Locator tube configuration
 Liquid feedback through locator
tube
 Interaction between locator tube and
staple (i.e., retracted during staple
formation)

19. Novel Aspects (cont'd)
19
DELIVERY DEVICE
 Overall device structure
 Timing components in the handle
housing
 Fluid feedback at handle
 Operation of handle (single trigger
to drive staples, withdraw locator,
and fire)
KIT
How is the device sold? Could any parts
be provided separately?
 Staples
 Loading tool for staples
 Reusable components? (i.e., separate
disposable shaft, reusable handle)
 Battery?
 Used in combo with any other
devices?

20. Novel Aspects (cont'd)
20
METHOD
 Method of operation of device – this will prevent others from selling a
device that is used in the same manner, but may not necessarily be
identical in structure (i.e., may not infringe your device claims)
 Method of locating puncture – again, blocks anyone from selling a device
that performs this locating procedure – provides good leverage because
claims are broad in their application, and are not limited to structure
 Method of delivery of staple into tissue
 Different uses – (i.e., close vessel, perform by-pass, perform mitral-valve
repair etc.) – think about if you were to license this to different companies
for different purposes, you are going to want to have claims specific to
these different purposes/uses

21. Offensive Claim Strategy
21
• The "buckets" will inform you claim strategy.
• Your product development will likely lead to some design changes.
You want to try to consider what changes could occur, and try to cover
those in your initial filing(s).
– Benefits:
• An early priority date.
• Ability to draft claims to cover these changes without having to file a new
application.
• May give you leverage over competitors.

22. Expanding Scope of Protection - DEFENSIVE
22
• Consider all of the variations. Look at each
bucket identified, and come up with all possible
variations.
– For example:
• How else could you locate the puncture?
• Does blood feedback need to be through same
locator tube that staple is delivered over?
• Can locator also serve as anvil? Other staple shapes?
*This is a really important exercise that will serve many purposes.

23. Leverage Over Competitors - DEFENSIVE
23
• Consider not only your own IP, but your
competitors IP.
– How do you do this? Know your competitors.
• Who are they?
• What are they doing?
• Look at their current technology and consider how
you could improve their technology.
* Consider having a point person at the company to perform quarterly searches and monitor
competitor IP

24. Filing Strategy
24
• VALUE: Look at your end game and assess the
value of obtaining patent protection on each of
the features discussed above.
• Since cost is always a factor, make careful
decisions tied to value. Lower value features
may not be worth focusing on.

25. Filing Strategy Examples
25
• Staple configuration and affect on tissue – What is the value of claims
covering this?
• Consider the low cost of staples and the ease of using other staple configurations.
May be less valuable.
• On the other hand, if you are bringing your product to market, your staples may
be extremely important because of their unique effect on sealing the closure, and
you may want to prevent others from selling a similar staple, giving your product a
competitor advantage.
• Locator Tube – This is a unique feature, feedback is important.

26. Filing Strategy Examples (cont'd)
26
• Different Uses/Fields – How important will it be to cover use of product
in other applications?
– If you are bringing product to market, this may be less important if you
don’t have any plans to ever use the product in other applications.
– Blocking competitors outside of your field of use may also not be that
important.
– On the other hand, if you plan to license or get acquired, this could be very
important.

27. Scope of Disclosure / Product Development
27
• Consider your product development.
– Do you have plans for future device with different
configuration?
– Do you want to disclose that now or later when it is
further developed?
• Recommendation: Your initial filing(s) should
cover your initial product as well as any
variations, uses, etc., but consider avoiding
disclosure of any undeveloped future products.

28. US Filing
28
Provisional
• A place holder and buys you a year.
• Benefit: Good if you are still in early
stages and anticipate changes.
• Warning: Keep in mind it starts your 1
year date to file both in the US and
Foreign.
• Drawback: Apps do not get examined, so
time to patent will be much slower.
Utility
• Consider filing a utility when product
changes are unlikely
• Benefit: Quicker path to obtaining an
issued patent; helps identify relevant
prior art
• Drawback: new matter (i.e., design
changes) cannot be added

29. Foreign Filing
29
• Consider your end-game again, and consider
revenue in each market.
– If you plan to bring product to market, make sure
you seek foreign protection in your major markets.
Smaller markets may not be worth it.
– If you plan to sell, consider potenteial acquirer’s
key markets; having protection in those countries
will increase the sale value.
– If you plan to license, consider where your licensee
is and where they would sell.

30. What We Learned Today
30

31. 31
Start developing
an IP Plan. Think
about your end
game.
Map out your
technology and
all of the
features.
Identify all of
the variations.
Monitor your
competitor's IP
and products.

32. Conclusion
32
Think about the value
of pursuing patent
protection on each of
the identified
“buckets.”
Make some important
decisions now about
your filing strategy.
Execute, and monitor
quarterly.
Final Tip: Your business goals are constantly changing, and your IP goals should always be aligned
with your business goals. If you don’t already, meet with your patent attorney quarterly to talk
about the business and IP strategy (most won’t or shouldn’t charge for this).

33. Member
Boston
617.348.3054
LAdams@mintz.com
JD, New England Law
BS, Texas State University
(Chemistry)
Lisa Adams
33
• Experienced patent and trademark attorney known for her
forthrightness and strategic approach
• Particular focus on medical technology, life sciences, mechanical
products and processes, chemical and materials science, and
electrochemistry
• Represents clients in patentability evaluations, the preparation and
prosecution of patent applications, and the reissue and
reexamination of patents
• Conducts freedom to operate studies, performs due diligence and
clearance studies, and helps clients build IP portfolios
• Named among the Top 250 Women in IP by Managing Intellectual
Property
• Clients include start-ups as well as large companies
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and is not intended as legal advice, and it should not be considered or relied upon as such.