The Basics of Intellectual Property and Patent Strategy for Maximizing Business Value: The Good, the Bad and the Ugly So You Can Make a Fistful of Dollars
This IP Strategy Overview was presented at a conference of innovators at Georgia Tech's College of Architecture in October 2013. The goal of this presentation is to go beyond the usual lawyer-generated content to highlight not only the positive aspects of IP, but also to give a reality check as to the likely ROI of investment in protection. A basic overview of IP (patents, copyrights, trademarks, trade secrets) is provided. Additionally, commonly overlooked forms of intangible asset value are presented. A case study of an innovation protection strategy is highlighted. Recommendations for business relevant IP and patent protection strategies are also included.
Rob McInnes, one of Australia's leading patent and technology licensing lawyers gives an overview of IP basics and recent developments aimed at startups.
This was presented in a recent workshop for the INCUBATE startups.
Presentation originally given to business advisors on 11 Oct 2008. Starting with a case study of three young entrepreneurs, the presentaiton considers how each of them can be assisted. It then deals with the sources of IP, the available assistance including inventors\' groups and clinics and the services avfailable form professional advisors.
Introduction to Patents and IP CommercializationHasit Seth
NEWS FLASH: //Check our latest course offering on Patent-Business-Strategy over at Udemy here: http://www.udemy.com/patent-business-strategy/ with a 50 per cent launch discount //
Introduction to Patents and IP Commercialization. These are slides from a talk I gave at Venture Center NCL (National Chemical Laboratory) in Pune, India to a audience of scientists involved in nanotechnology.
Rob McInnes, one of Australia's leading patent and technology licensing lawyers gives an overview of IP basics and recent developments aimed at startups.
This was presented in a recent workshop for the INCUBATE startups.
Presentation originally given to business advisors on 11 Oct 2008. Starting with a case study of three young entrepreneurs, the presentaiton considers how each of them can be assisted. It then deals with the sources of IP, the available assistance including inventors\' groups and clinics and the services avfailable form professional advisors.
Introduction to Patents and IP CommercializationHasit Seth
NEWS FLASH: //Check our latest course offering on Patent-Business-Strategy over at Udemy here: http://www.udemy.com/patent-business-strategy/ with a 50 per cent launch discount //
Introduction to Patents and IP Commercialization. These are slides from a talk I gave at Venture Center NCL (National Chemical Laboratory) in Pune, India to a audience of scientists involved in nanotechnology.
Deck designed and delivered by Ian Bell from the Canadian Intellectual Property Office during his session at the Vancouver Innovation Labs (May 24th, 2016)
An overview of the basics of US trademark law for entrepreneurs, business people, and creative professionals. "What Is a Trademark?" includes the following:
A brief definition of trademarks.
Definitions of the other forms of intellectual property (copyright, patent, and trade secrets).
Types of trademarks.
What's trade dress?
How are trademark rights acquired?
Trademark registration, and what do those symbols ™ and ® mean, anyway?
How long do trademark rights last?
For more information, please go to LizerbramLaw.com
NEWS FLASH: //Check our latest course offering on Patent-Business-Strategy over at Udemy here: http://www.udemy.com/patent-business-strategy/ with a 50 per cent launch discount //
This a discussion on patent infringement for academic purpose. Please do NOT consider this legal advice.
[Some material has not been updated for recent changes, so use it at your own risk]
Disclaimer: This is not legal advice.
The above presentation is a step to simplify the concept of Trademark in India.It also focuses on the process of registration under the Trademarks Act 1999.
The presentation simplifies the steps involved and makes it easier to understand the same.
Note:-The following presentation is a general writing containing contents derived from basic knowledge and relevant books and articles.Also it is the original work of the writer.
CEIPI summer school on IP in Europe 2018 - Presentation IP Strategies in EuropeMIPLM
Prof. Alexander J. Wurzer gave a presentation on IP Strategy in Europe along with industry insights into European best practice cases for IP strategy across different sectors, technologies, and business models.
Besides formal patent applications, start-ups can also apply for provisional patent applications. Find out what it takes to have a pending patent for your invention.
Patent Monetization Strategies - Patexia IP Matters WebinarPatexia Inc.
There's A LOT to learn about how to best monetize patents. How do you decide between either selling or licensing patents? How should a patent owner think about this important decision? What are the most current strategies for this issue?
Peter Kim is an expert in monetizing patents. He's is a principal at Irvine Pointe and former Director of IP Strategy at Rambus. In this installment of the IP Matters web series, he'll provide 20-minute coverage of key issues in patent monetization.
Deck designed and delivered by Ian Bell from the Canadian Intellectual Property Office during his session at the Vancouver Innovation Labs (May 24th, 2016)
An overview of the basics of US trademark law for entrepreneurs, business people, and creative professionals. "What Is a Trademark?" includes the following:
A brief definition of trademarks.
Definitions of the other forms of intellectual property (copyright, patent, and trade secrets).
Types of trademarks.
What's trade dress?
How are trademark rights acquired?
Trademark registration, and what do those symbols ™ and ® mean, anyway?
How long do trademark rights last?
For more information, please go to LizerbramLaw.com
NEWS FLASH: //Check our latest course offering on Patent-Business-Strategy over at Udemy here: http://www.udemy.com/patent-business-strategy/ with a 50 per cent launch discount //
This a discussion on patent infringement for academic purpose. Please do NOT consider this legal advice.
[Some material has not been updated for recent changes, so use it at your own risk]
Disclaimer: This is not legal advice.
The above presentation is a step to simplify the concept of Trademark in India.It also focuses on the process of registration under the Trademarks Act 1999.
The presentation simplifies the steps involved and makes it easier to understand the same.
Note:-The following presentation is a general writing containing contents derived from basic knowledge and relevant books and articles.Also it is the original work of the writer.
CEIPI summer school on IP in Europe 2018 - Presentation IP Strategies in EuropeMIPLM
Prof. Alexander J. Wurzer gave a presentation on IP Strategy in Europe along with industry insights into European best practice cases for IP strategy across different sectors, technologies, and business models.
Besides formal patent applications, start-ups can also apply for provisional patent applications. Find out what it takes to have a pending patent for your invention.
Patent Monetization Strategies - Patexia IP Matters WebinarPatexia Inc.
There's A LOT to learn about how to best monetize patents. How do you decide between either selling or licensing patents? How should a patent owner think about this important decision? What are the most current strategies for this issue?
Peter Kim is an expert in monetizing patents. He's is a principal at Irvine Pointe and former Director of IP Strategy at Rambus. In this installment of the IP Matters web series, he'll provide 20-minute coverage of key issues in patent monetization.
This short presentation provides innovators and entrepreneurs with an overview of the basics of patent and IP protection from a business perspective. The aim and goal is to introduce non-patent experts to topics that, when properly introduced into their organizations, can help reduce risk and maximize the return on innovation investment. Some myths are dispelled in the presentation, also.
This presentation is the case study discussed at the 2d Open Innovation Summit about understanding the roles and incentives of people in your organization who have decision-rights and who can kill your Open Innovation initiatives. This case study will be used to help the workshop attendees better navigate the issues that arise when trying to bring Open Innovation into their organizations.
Patent Strategy for Startups, Hardware Workshop SF 2015 Peter Miller
Peter Miller of Run8 Patent Group speaks on Patent Strategy for Startups at Hardware Workshop SF, 17-SEP-2015
Full video here: https://www.youtube.com/watch?v=RxpglTNQOyc
Strategic Management of Intellectual Property: R&D Investment Appraisal Using...Editor IJCATR
Company executives are under increasing pressure to proactively evaluate the benefits of the huge amounts of
investment into intellectual property (IP). The main goal of this paper is to propose a Dynamic Bayesian Network
as a tool for modeling the forecast of the distribution of Research and Development (R&D) investment efficiency
towards the strategic management of IP. Dynamic Bayesian Network provides a framework for handling the
uncertainties and impression in the qualitative and quantitative data that impact the effectiveness and efficiency
of investments on R&D. This paper specifies the process of creating the graphical representation using impactful
variables, specifying numerical link between the variables and drawing inference from the network
Value2.0. Capturing Value From Innovative TechnologiesJoseph Kristy
We are at the beginning of an era of true transformational change. The full power of the Internet, globalization and innovative new technologies are coming together, and in doing so, are changing the rules of business, culture and society. The purpose of this paper is to help
executives understand the new ways in which emerging technologies and principles are enabling value creation through what we call the “new
rules of Value 2.0.”
This short presentation provides a basic overview of IP protection for innovators and entrepreneurs. The aim and goal of this presentation is to introduce readers to topics that can assist in improving innovation ROI. Some myths about IP are also dispelled.
The Gannons Intellectual Property Technology seminar brings together respected professionals from the legal and commercial technology sectors.
Our seminar covers:
Tech and Software: Discover how businesses navigate, embrace and compete with the deluge of disruptive technologies.
IP Tech from a Legal perspective: Resolve the major legal challenges faced by tech firms. We share our knowledge and expertise.
IP Insurance: Intellectual property insurance needn't be expensive. We demonstrate the options available for Tech businesses.
The Speakers:
Jimmy Vestbirk - a technologist with a focus on LawTech and works with start ups.
Graham Bell - a technical consultant specialising in product development, and has extensive international experience advising clients in the creation, application and exploitation of technology with a core focus in telecommunications and consumer electronics.
Amardeep Dhillon - a barrister who specialises in IP. Amardeep is regularly instructed in matters in the High Court, Companies Court and has appeared before the Court of Appeal. He will discuss case studies on IP and Technology.
An IP Expert in ATE (after the event) and BTE (before the event) insurance solutions helping businesses to reduce their financial risks in litigation.
Patents play different strategic roles in different industries. Because patent law is independent of industry structure, capital needs, R&D patterns, or the relationship between innovation and commercialization, however, elements that are critical to some industries threaten others. Yet every patent, regardless of quality, is a presumably valid federal license authorizing its bearer to restrict, reduce, restrain and contest all products in its sphere of exclusivity.
Armed with patents, big companies can police their competitors; small companies can secure hefty license fees or investment stakes; and non-practicing entities (NPEs) can file strategic lawsuits. Inattention to this terrain courts disaster. Any company possessing patentable technology must recognize that someone else may patent it first. Any company possessing patents must learn how to extract maximum profitability from intangible assets. And every company must appreciate that success invites litigation and explore preventative and defensive steps.
Learning Objectives:
- Understand the role that patents play in the economy
- Highlight key aspects of the legal terrain
- Revisit the roots of the modern era of patenting
- Recognize how to counsel companies in light of the current patent terrain
- Identify different types of patentees and the strategies they favor
- Recognize key strategic and valuation questions
- Appreciate the importance of a Strategic Patent Counsel
mHealth Israel_Patent Strategy: Disruptive vs Incremental InnovationLevi Shapiro
Presentation by Roy Melzer, Head of Software Department, Ehrlich & Fenster, for the mHealth Israel community, Feb 8, 2017. IP strategy based on diversification and portfolio theory, combining incremental and disruptive innovation.
Posturing ip rs for settlement (2016-03-24)Patexia Inc.
A petitioner has to carefully craft IPR petitions to obtain institution of trial with the PTAB. But another way to “win” an IPR is to posture the petition filing to encourage early settlement with the patent owner. Learn how IPR petitions are perceived by both the petitioner and patent owner at various stages of an IPR and strategies that maximize early settlement potential.
Cambridge IP Webinar: Developing a fact-based IP strategyQuentin Tannock
Webinar presentation: Developing a fact-based intellectual property strategy.
Includes case studies and extracts from analysis of patent activity in the 'micro-scale energy harvesting device' space.
Dr. Ravi Dhar on Intellectual Property & Technology Management_ University o...
Similar to The Basics of Intellectual Property and Patent Strategy for Maximizing Business Value: The Good, the Bad and the Ugly So You Can Make a Fistful of Dollars
Traklight Webinar with Shane Olafson and Kyle Siegal on Patent Dos and Don'ts...Traklight.com
A discussion of patent tips for startups, including:
- Carefully allocating precious startup funding
- Properly limiting disclosure of new products and concepts
- Understanding patent application timelines
- Knowing when a provisional application may be appropriate
If there was a guidebook we could hand to inventors on the first day following the conception of their idea, this episode would be it.
When is it safe to talk about or sell your invention? How do you hedge against invalidation and rejection from competitor IP? How do you ensure you actually own your invention?
In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, leads a discussion along with our all star patent panel, exploring the most common patenting missteps taken by inventors and startups. The focus largely centers around three key areas:
1) Publicly disclosing your invention before you have filed a patent application.
2) Not searching to see if your invention or something similar already exists commercially or in publicly available resources.
3) Not carefully contracting with outside vendors and employees to make sure you own your invention.
The group highlights best practices for not making the mistakes in the first place and explores available remedial options should you already be in need of a rescue line.
Ashley is also joined today by our always exceptional group of IP experts including:
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ Ty Davis, Patent Strategy Associate at Aurora
⦿ David Jackrel, President of Jackrel Consulting
As a startup team, you create something—whether it’s software, a domain name, business logistics or a reputation—that falls within a class protected by the law. Some classes are protected automatically. Others require going through a registration, application or examination process. Fenwick lawyers Stephen Gillespie and Christopher Joslyn discuss what intellectual property is, why it is important and hot-button issues startups commonly face.
IP rights are an important class of intangible assets that can be assigned or licensed to generate revenue. Indeed, some companies do not make or sell products; their entire revenue is derived from the licensing of their patents. Suffice it to say, licensing revenue has become a significant source of value in the global intellectual property economy. This webinar will help you better understand the complex legal issues associated with IP transactions.
To listen to this webinar on-demand, go to: https://www.financialpoise.com/financial-poise-webinars/buying-selling-ip-2020/
Buying & Selling IP (Series: Intellectual Property 201)Financial Poise
IP rights are an important class of intangible assets that can be assigned or licensed to generate revenue. Indeed, some companies do not make or sell products; their entire revenue is derived from the licensing of their patents. Suffice it to say, licensing revenue has become a significant source of value in the global intellectual property economy. This webinar will help you better understand the complex legal issues associated with IP transactions.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/buying-selling-ip-2021/
Legal mistakes can doom even the best startup concepts and founding teams. This workshop prepares you with a legal road map to successfully safeguarding your product or idea. Yuri Eliezer, Founder and Patent Attorney at SmartUp, will show you how to reserve your Intellectual Property rights.
How, as a burgeoning company, should you fit intellectual property investment into your business strategy? We outline Typical IP strategies for startups and help advise how to value factors such as risk, counter assertions and more.
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...MaRS Discovery District
Discover why intellectual property is a critical asset to your company. Within the context of current economic uncertainty, this series covers cost-effective strategies for securing IP and patent rights to enhance the market value and competitive position of your life sciences or ICE company.
[webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Pr...OurCrowd
Join Zack Miller, Head of the Investor Community at OurCrowd, and Heidi Brun, leading patent attorney and Joint Head of the Patent Department at Eitan, Mehulal & Sadot, as they discuss the importance of understanding the fundamentals of intellectual property rights in order to make informed investment decisions.
Join us to learn about:
The various types of Intellectual Property (IP) and how they work
Why it is important for investors to read patents
Techniques for valuing intellectual property and how investors can do their own ownership research
Management, strategizing and budgeting of patent portfolios for companies at different stages of development
Presentation given to the Chicago Lean Startup Circle on Dec. 1, 2011.
In a lean startup, getting product-to-market-fit is everything. Along the way, consider core IP issues to make sure your startup owns all of the value that you are adding. You can also have lean IP, just make sure you fully understand the implication of bootstrapping.
As always, consult with a lawyer if you have questions or concerns.
Presented by James Longwell, Partner
The information in this presentation is for general information purposes only. It does not constitute a legal opinion or other professional advice.
It all starts with an epiphany. Every invention begins with a single “eureka moment” or some “brilliant revelation” that causes the inventor to take action.
These epiphanies become the idea seeds planted by inventors around the world. But we can only wish the process was as simple as adding water and fertilizer and waiting for the ideas to spring to life.
Inventions are not just patents to be hung on a wall. They are the starting point for a new business enterprise. So, not only does the inventor have to figure out how to create a working product or device, they also have to drive it forward, creating a business model that will enable it to survive. And that’s where we come in.
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How to develop a profit-centric mindset, the same thinking used by most successful inventors, to maximize your odds of success.
How to decide if your invention needs to be patented. If it doesn’t, this can save you significant amounts of money.
Who you should be listening to. Advice will come from many sources, but not all of it will be good.
How to best position yourself for funding. Hear it directly from the people who have money to invest.
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The Basics of Intellectual Property and Patent Strategy for Maximizing Business Value: The Good, the Bad and the Ugly So You Can Make a Fistful of Dollars
1. IP: The Good the Bad and the UglyHow to Create Value So You End Up
with a Fistful of Dollars
Jackie Hutter, MS, JD
JHutter@LeanLegalTeam.com
2. Take Aways from Today’s Conversation
Overview of the Types of IP
• Not just patents but a “whole toolkit”
Demonstrate that patenting is a business issue
not a legal or technical issue
• New model for creating long term business value
Introduce concept of patenting innovation vs.
invention
• Key to durable competitive advantage
Copyright: The Lean Legal Team 2013
3. My Perspective
• Almost 20 years as IP professional
– Law firm
• Prosecution and counseling
• Litigation
– Corporation
• Legal and innovation counsel
• Last 6 years as “IP Strategist”
– Put business issues before legal
issues
– “Validate your business, not just
mine”
– Truth telling, not risk mitigation
• Research scientist/inventor
– Insights from the trenches
Copyright: The Lean Legal Team 2013
4. IP Strategists?
•New breed of business
counselor who aligns client’s
commercial strategy with IP
protection
▫Beware lawyers who “do
strategy”
•IP and business expertise
•Driving principle: “IP is
worthless if it does not
support a viable business
strategy”
• Frequently in-house lawyer,
but not always
•Many not attorneys
Copyright: The Lean Legal Team 2013
5. The Good, The Bad and the Ugly of
Creating Value from IP
Copyright: The Lean Legal Team 2013
7. Patent vs. Intellectual Property
Patent
Copyright
Trade
secret
Trademark
“Intangible
assets”
Copyright: The Lean Legal Team 2013
8. Patent Types
1. Utility Patent:
patents on inventions which function in a new way or to
provide a new result
2. Design Patent:
patents on the aesthetic design or ornamentation of
something that already exists; no change for functionality
of the object, only gives it a novel appearance
3. Plant Patent:
patents on types of plants that may be reproduced by
grafts and cuttings
Copyright: The Lean Legal Team 2013
9. What Is a Utility Patent?
• Exclusive rights granted by a
government to anyone who
invents or discovers any new
and useful process, machine,
article of manufacture, or
composition of matter, or any
new and useful improvement
thereof
• Patent irrelevant to business
value, only demonstrates
meets legal requirements
Copyright: The Lean Legal Team 2013
10. US Utility Patent Data
PatentlyO.com
Copyright: The Lean Legal Team 2013
12. Where Can You Obtain a
Patent?
National
Patent Office
WIPO
• USPTO
• State Intellectual Property Office of
China
• Japan Patent Office…
• International patent application
office
• headquartered in Geneva,
Switzerland
• Still must apply nationally
Copyright: The Lean Legal Team 2013
13. U.S. Utility Patent Applications
provisional
application
non-provisional
application
Allow filling
without any formal
patent claims, oath
or declaration or
any information
disclosure
statement
Less costly
No real protection
“Saves place in
line”
Contains at least
a specification, all
the drawing
figures and at
least one claim.
Goes through
examination
Can be filed
multiple times
Copyright: The Lean Legal Team 2013
14. Utility Patent Application Process
Invention Identified
and Vetted for Filing
Expense
Application Drafted
and Filed by Attorney
$5,000-$50,000
Application Published
18 months
Final Rejection
Response by Attorney
Amendment of Claims
$3000-$10,000
Office Action
12-36 months
Allowance
$1500
Maintenance Fees
3.5, 7.0, 11.5 Years
$900, $2300, $3800
Copyright: The Lean Legal Team 2013
15. Patent Features
Exclusivity
• One patent per invention
• Without patent holder
permission no one can make,
market, use, import, etc the
patented invention
– Otherwise, regarded as patent
infringement
Territory
• Patent limited to certain country
• No effect on other country
Time
• Term of a patent is limited
• 20 years from earliest filing date
Copyright: The Lean Legal Team 2013
in US
16. Patent Business Basics
What Patents Are (and Aren’t)
• Given by government for
useful, new and unobvious
inventions
• Recognition that invention
meets the legal requirements
for patentability
– Checklist of statutory
obligations for both
invention and way patent
is written
• Only market determines
business value of invention
Copyright: The Lean Legal Team 2013
17. Patent Business Basics
Patents as a Property Right
• Not a monopoly
• A right to exclude
– Broader
• Can use
• Not use
• Keep others from doing
what they would otherwise
be free to do
• No right to practice the
invention claimed
– Inventor can be blocked
by other’s patent rights
Copyright: The Lean Legal Team 2013
18. Patent Business Basics
What are Patent Owners Rights?
• Improvements
existing patented
inventions also
patentable
• “Improvement”
patents
• If best way to
practice underlying
invention, can stop
first inventor
• Someone else can
improve on your
patented invention
and stop you so you
Copyright: The Lean Legal Team 2013
are both blocked
21. Other Ways to Protect Business Ideas
“The Regulars”
• Trade secret protection
– Good when idea cannot be
reversed engineered
• Coke® formula, customer
lists
– Can be licensed or sold, but
harder because often not wellrecorded
• Trademark protection
– For some business ideas, strong
trademark protection more
valuable than patent rights
Copyright: The Lean Legal Team 2013
22. Other Ways to Protect Business Ideas
“The Regulars”
• Copyright protection
– Good for software /logos
– Statutory damages of at least $100K
available if register prior to bringing
suit
• Design patent protection
– Protects ornamental aspects of
invention
– Can exist with utility protection
– Recent case law make stronger
• But not as strong as utility patents
– Inexpensive and quick
• < $2K and typically 1.5 years or
Copyright: The Lean Legal Team 2013
23. Other Ways to Protect Business Ideas
“Not So Regulars”
• Ride on coat-tails of another
patent
– Strategic alliances, joint
ventures
• Ex: If supplier has patent to
raw material and you obtain
exclusive rights to use , can
be almost the same as
obtaining own patent
• Commercial relationships
– Contractual-based market
exclusivity
Copyright: The Lean Legal Team 2013
• Many others!
24. Other Ways to Protect Business Ideas
“Not So Regulars”
• First Mover Advantage
– Sometimes first to market ends
up effectively owning the
relevant market, especially
when
• Limited distribution
opportunities;
• Short shelf life; or
• Only enough customers for 1
supplier
• Customer Traction
– “Traction is the new IP”
Copyright: The Lean Legal Team 2013
26. Who Makes Money from Patents?
% Probability that $ Obtained
100
90
80
70
60
50
40
30
20
10
0
Patent Lawyer
USPTO
Entrepreneur
Copyright: The Lean Legal Team 2013
27. Complete this sentence
• When all you have is a
hammer, everything looks like a
_________.
Copyright: The Lean Legal Team 2013
29. Do You Really Know What a
Patent is Good For?
• Many assume patent are
necessary step for
business
– Could be waste of
resources
• Money and time
• Many assume that not
necessary to create
business value
– Often wrong
• Lose exclusivity in
successful
business model
Copyright: The Lean Legal Team 2013
30. Patent Business Basics
Most Patents Worth Little
• Very few patents
worth what people
think they are
– Cover invention that
no one will buy
• Don’t understand
underlying value
proposition
– Is there IP? Check.
– False sense of
security
Copyright: The Lean Legal Team 2013
31. Patents: Not What People Think They Are
• Does not guarantee invention is
valuable
– Government recognition that idea
meets legal requirements of
invention
– Free market/business savvy
determines actual value
• If business value in idea, then
patent might be necessary (but not
always)
– Do we “fetishize” patents?
• Most filed before a marketable
product
– Issued patent often does not
cover actual product
– Lawyers recommend early filing 2013
Copyright: The Lean Legal Team
32. What You Need to Know Before Filing
• Contract with government
– Patentee discloses trade secrets
in exchange for limited exclusive
rights
• Repudiation of trade secret
protection
– Must “open the kimono”
• Patentee obligated to be truthful
– Disclose all information known
about invention
• Relevant times
– 3-7 years from filing to issue
– Lasts 20 years from date of filing
Copyright: The Lean Legal Team 2013
33. What You Need to Know Before
Filing
• Must be filed within 1 year of 1st
public use or sale
– Some flexibility
– Timing relates to THE invention
• Substantial ability to delay
filing if strategic about
process
• More patents not necessarily
better
– 1 with commercially broad
claims enough
• Must “cover the innovation
not just the invention”
Copyright: The Lean Legal Team 2013
34. What You Must Know Before
Filing
• Costly
– Minimum of $10K for simplest
technology
– $20K or more of moderately
complex cases
– Foreign filing in top line countries
can easily end up costing $250K or
more
• Lengthy
– Today average pendency in US is 3
years or more
• Significantly longer in foreign
countries
– No protection until issuance
Copyright: The Lean Legal Team
– Market often exhausted by time 2013
35. What You Must Know Before
Filing
• Systemic problems in Patent
Office enhance difficulties
– Even the most carefully
drafted and skillfully
prosecuted may never issue
– Costs cannot be recovered
if patenting efforts
ultimately fail
Copyright: The Lean Legal Team 2013
36. What You Must Know Before Filing
• When are Patents Worth
$$?
• When a current or future
viable business model is
covered by the claims
– Yours
– Someone else’s
• No business model
coverage = $ 0 value
Copyright: The Lean Legal Team 2013
37. What You Must Know Before
Filing
• But, even if viable
business model and
patentable, there are
times when don’t want
patent
– Will someone copy?
– Do you care?
– Can you use
defensively against
others?
– Interest in monetizing?
• Key inquiry: What is
ROI of patent to total
Copyright: The
value of opportunity? Lean Legal Team 2013
38. What You Need to Know Before Filing
• For patent attorneys risk arises
when clients wait to file
– “File early and often”
– One type of risk
• For entrepreneurs, risk arises for
waiting AND for filing before
business model validated
– Must balance risks
Copyright: The Lean Legal Team 2013
39. Patent Business Basics: Patents as Currency
• Patents have
transactional value when
cover business model and
marketplace exists
– Relatively few
business areas buy
and sell today
• Technology
• Biotech/Health
– Others non-existent or
still emerging
• CPG
• Chemicals
• “Stuff you drop on Lean Legal Team 2013
Copyright: The
40. Key Takeaways
• To determine whether you
need to generate your own
patents or acquire from
outside
– 1) Identify business model
(product, service etc.)
– 2) Determine whether patents
needed to obtain maximum value
from this business model or if it
is likely that competitors will use
patents offensively against you
– 3) If yes to #2, generate or
acquire
– 4) Put business team in charge
of execution and make
accountable
Copyright: The Lean Legal Team 2013
42. Case Study: Invention vs. Innovation
• Invention: 1st viable
“hands free” dispenser
• Innovation: Hygienic way
to dry hands in public
place
• Invented from scratch
– Sensor was key aspect
• 25+ patents on invention
• Created market demand
• Competition reacted by
designing around
– Now 6+ different options
– Price eroded market
Photo: GP.com
Copyright: The Lean Legal Team 2013
43. Case Study: Invention vs. Innovation
• What kind of
claims should GP
have sought?
• What was
innovation?
• Why do customers
buy?
• How would
competitors
compete?
Photo: GP.com
Copyright: The Lean Legal Team 2013
44. Innovation vs. Invention
• For platform
products, patent
coverage must be
innovation focused
– Problem not just solution
• Most patents only latter
• Take out of silo of
inventor and patent
attorney
– Traditional viewpoint
• Business team and
others must be involved
in patenting process
– How would others would
solve consumer
problem?
– Use your efforts as a
Copyright: The Lean Legal Team 2013
roadmap?
46. Getting Your IP Right
IP Strategy is Business Strategy
• Why you are protecting IP depends on
your business plans
IP Procurement is Legal Strategy
• How IP obtained depends on legal issues
• Proceed only if will allow successful
execution of business strategy
Copyright: The Lean Legal Team 2013
47. Getting Your IP Right
Business leaders need to learn enough
about IP process to be able to align
business goals with IP efforts
• Lawyers can guide the process, but must not drive
the process
IP Strategy (and intangible asset strategy)
is critical feature of generating exit value
• Just because “they don’t teach it in B-school”
doesn’t mean that IP is not the job of business
people!
Copyright: The Lean Legal Team 2013
48. Identifying Intangible Asset Value
• 1. What makes YOUR business
different from its competitors?
– What is your unique competitive
advantage?
• Identify each and every one
• 2. Would YOUR business be
harmed if this difference was lost
to a competitor?
– If so, you must capture and protect it
so that you can realize it!
• Important qualifiers
– Copying is legal and appropriate if
you don’t protect your competitive
advantage
– Some things are not protectable, but
knowing this is the caseLean Legal Team 2013
Copyright: The allows you
49. Possible Sources Competitive Advantage
Patentab
le
Invention
s
Others
Specific
to
Business
Model
Your
Busines
s’
Intangibl
e Asset
Value
Employe
es
Trademar
ks
Brand
Equity
Busines
s
Process
es
Custome
r/
Supplier
s
Copyright: The Lean Legal Team 2013