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Protecting IP Globally
This document discusses the global protection of intellectual property (IP), strategies for finding infringers, and enforcement considerations. It highlights the differences in IP enforcement across countries, the options for IP insurance, and notable recent patent reforms in various jurisdictions. The presentation emphasizes the importance of monitoring competition and utilizing effective tools for intellectual asset management.
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Protecting IP Globally
- 1. 7/13/20181 Protecting IP Globally FindingInfringers and Then What? Brad Pedersen March 30, 2010 The Academy View of Competitive Landscapes. The Academy View of Developing Technologies. Strategy Attribute Matrix. Finding Infringers. How Will You Pay For This? Changing the Game. First-to-File w/ Grace (FTFG)
- 2. Protecting IP Globally FindingInfringers and Then What? © 2010 Patterson Thuente Christensen Pedersen, P.A., some rights reserved - www.ptslaw.com RIGHT TO USE: This presentation may be freely distributed, used and/or modified, so long as appropriate attribution is made that includes retention of the firm name in connection with any materials from this presentation. DISCLAIMER: This presentation and any information contained herein is intended for informational purposes only and should not be construed as legal advice. Seek competent legal counsel for advice on any legal matter.
- 3. The Academic Viewof Competitive Landscapes 7/13/20183 Known Rivals Customers New Market Entrants Suppliers New Product/Tech Prof. Michael Porter, “Competitive Strategy: Techniques for Analyzing Industries and Competitors” (1980)
- 4. 7/13/20184 The Academic Viewof Developing Technologies Prof. Christensen, “The Innovators Dilemma, When New Technologies Cause Great Firms to Fail” (1997)
- 5. Strategy Attribute Matrix 7/13/20185 DennisSkarvan, Caterpillar Chief IP Counsel, AIPLA presentation, January 27, 2010
- 6. Finding Infringers: To Huntor Not to Hunt … Large Entity vs. Small/Medium Entity LE – more systematic SME – mostly ad hoc Is it bigger than a breadbox? Minimum Country Threshold • $1M-$10M market opportunity for patents • $100K-$1M market opportunity for tm/domain name Minimum Aggregate Threshold • $10M-$100M market opportunity for patents • $1M-$10M market opportunity for tm/domain name July 13, 20186
- 7. Know what youare hunting for … by having good maps July 13, 20187 Product IP Maps Shortcut to identifying infringers Critical for using IP metrics Patent Family Maps The larger the portfolio – the better the maps need to be Often part of an Intellectual Asset Management (IAM) tool Patent Claim Crib Notes A shorthand of broadest claim scope in patent family Not intended to be claim interpretation – e.g., “claims directed to …”
- 8. Where to startlooking … Internally Sales Force Employees Inquiries Externally Customers Analysts Consultants Conferences/Trade Shows July 13, 20188
- 9. Monitoring the Competition July13, 20189 Monitoring Web Patent Citations Trademark Publications Relevant Blogs Clipping/Alert Services Thompson Monitor Pantros CIA Trademark Publications Google/Yahoo Alerts Domain Name monitors
- 10. The Usual Suspects:A Quick Comparison Country Cases (2008) Single vs. Dual Tech Judge Disc- overy Time (mos) Costs ($M) Loser Pays Dam- ages Patent Wins Opp/ Reexam China ≈4,400 Dual Yes Low 9-15 0.5 - 1 Most Low* 50-70% IPR US ≈2,900 Single* * No** High 24 -48 1 - 6 Rare High 30-40% IPR Korea ≈1,000 Dual Yes Med 18-24 0.5 - 1 Some Med < 10% None Germany ≈750 Dual Yes Low 9-15 0.5 - 1 Often Med 30-40% EP Opp Japan ≈500 Dual Yes Med 0-15 0.5 - 1 Rare High 40-50% No France ≈200 Single No High 12-24 0.5 - 1 Often Med 30-40% EP Opp UK ≈100 Single No High 24 -48 2 - 4 Often Med 30-40% EP Opp July 13, 201810
- 11. Other Enforcement Considerations PickingLocal Counsel 3-R’s: Reputation, Relationships and Representative Clients Language skills are key Notices and Injunctions Varies by jurisdiction Customs actions Available in some countries - Japan, US Not available in others - Canada Can be much faster July 13, 201811
- 12. And how willyou pay for this? One option: IP Insurance Abatement Insurance A policy written for covering offensive use of IP Doesn’t cover “pre-existing conditions” Viable option for SMEs How it works Applies to legal costs to enforce a patent/trademark – US and OUS Typical policy limits - $1 - 5M 80/20 copay – insured has a financial stake in the game “Bond-like” repayment in the event of a financial resolution Annual premiums – 1-2% of policy limits Discounts for multiple patents and pending applications July 13, 201812
- 13. Changing the Rulesof the Game US Patent Reform S. 515 – back in limbo Chinese Patent Reform New law in 2009 Absolute novelty Prior use defenses Japanese Patent Reform New bill by 2012 European Patent Reform Pushing for Single EP Patent Court July 13, 201813
- 14. S. 515: First-to-Filew/ Grace (FTFG) Will Be Different July 13, 201814 FIG. 1 – Scenarios where both parties are seeking a patent (based on hypothetical evaluation of about 200 typical fact patterns) 0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100% First inventor obtains patent Second inventor obtains patent Neither party obtains patent PercentageofTotalScenarios FTI System FTF Systen FITF System FTFG System
- 15. S. 515: First-to-Filew/ Grace (FTFG) Will Be Different July 13, 201815 FIG. 2 – Scenarios where only 1 party is seeking a patent (based on hypothetical evaluation of about 200 typical fact patterns) 0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100% Patenting party is the first inventor Patenting party is the second inventor No party is entitled to the patent PercentageofTotalScenarios FTI system FTF system FITF system FTFG System
- 16. THANK YOU! 7/13/201816 Brad Pedersen| 612.349.5774 | pedersen@ptslaw.com