Presentation, hosted by MIT’s Venture Mentoring Service and its Technology Licensing Office, discussing how timing and strategy are important tools in patent portfolio building.
Commercialization and problems with case studies in Industrial PharmacyArchana Mandava
This document discusses technology transfer and commercialization. It notes that commercialization involves identifying potential research for commercial exploitation through licensing agreements, joint ventures or spin-outs. The process involves multi-disciplinary teams and protection of intellectual property through patents, trademarks or copyrights. Key aspects of commercialization include sustaining innovations over time through a staged process that involves stakeholders. Common problems include weak intellectual property and ideas, which can be addressed through targeted funding and training commercialization managers.
The document discusses the process of commercializing inventions, including defining commercialization, evaluating methods and prerequisites, protecting intellectual property through patents and NDAs, overcoming challenges, and maintaining secrecy. The commercialization process involves developing prototypes, conducting assessments of market potential and financial viability, determining commercialization goals, and approaching investors or marketing avenues. Challenges for inventors include lack of funding, marketing skills, and business knowledge, but various organizations can provide support throughout the process.
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Speakers: Maria Stout and Paul Stellmann
Commercialization and problems with case studies in Industrial PharmacyArchana Mandava
This document discusses technology transfer and commercialization. It notes that commercialization involves identifying potential research for commercial exploitation through licensing agreements, joint ventures or spin-outs. The process involves multi-disciplinary teams and protection of intellectual property through patents, trademarks or copyrights. Key aspects of commercialization include sustaining innovations over time through a staged process that involves stakeholders. Common problems include weak intellectual property and ideas, which can be addressed through targeted funding and training commercialization managers.
The document discusses the process of commercializing inventions, including defining commercialization, evaluating methods and prerequisites, protecting intellectual property through patents and NDAs, overcoming challenges, and maintaining secrecy. The commercialization process involves developing prototypes, conducting assessments of market potential and financial viability, determining commercialization goals, and approaching investors or marketing avenues. Challenges for inventors include lack of funding, marketing skills, and business knowledge, but various organizations can provide support throughout the process.
What's behind China's recent Patent Explosion?Dilip P Pandya
China has experienced a rapid increase in patent filings in recent years, with over 2.3 million applications filed in 2014 compared to 578,000 in the US. This growth is driven by China's strategic plans to transition from manufacturing to innovation and incentives for domestic companies and individuals to file patents. Key factors contributing to China's patent explosion include government plans to quadruple inventions per capita by 2020 and incentives like tax breaks and cash bonuses for useful patents. Given these trends, companies should focus on early patent filing in China, patent quality, preventing IP loss, and avoiding infringement of others' patents to protect their innovations in the Chinese market.
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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.
This document provides an overview and summary of intellectual property concepts including patents, trademarks, copyright, industrial designs, and trade secrets. It also discusses strategies for patent filing, including whether to file, where to file, and the differences between US provisional and non-provisional patent applications. Key recommendations include establishing an IP strategy, prioritizing inventions based on business plans and budgets, and using the patent cooperation treaty or priority applications to keep filing options open.
Partners Maria Stout and Paul Stellman kicked off a two-part, comprehensive discussion of strategic planning for capturing and protecting intellectual property. The presentation served as an introduction to the topic and provided more general information.
Speakers: Maria Stout and Paul Stellmann
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Patent Registration in India | Intellectual Property for Entrepreneurship and Start-ups
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Q. How can we help you?
A. We always welcome potential queries and will be glad to assist you in:
Protecting your Idea / Product / Technology / Business Model / Software / Mobile Application / Website
Providing Legal Advice to start, grow and run your business (Physical / Online / Offline / Cloud)
Providing Advice to avoid legal issues with your email / mobile advertising campaign
Deciding whether you need patent for your business or not
Creating a prototype while avoiding legal issues and overhead expenses
Ensuring your website / mobile application is in compliance with data privacy laws
Deciding proper business structure and ownership
Negotiating with investors and VCs
Creating, Managing and Utilizing ESOPs (Employee Stock Options)
Selecting right name for your business (Trademark Law Issues)
Positioning your brand in market (Trademark Law Issues)
Drafting Contracts and Agreements
Drafting Website terms and Privacy Policies
Getting a fixed quote
Contact Us 24/7
info [at] techcorplegal [dot] com
CambridgeIP: Case Studies Of Recent Client EngagementsCambridgeIP Ltd
CambridgeIP’s experience has shed light on multiple client needs that can be met through the use of patent-based intelligence. The set of anonymised case studies below illustrate some recurring client needs and solutions we have developed to meet these.
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Many startup founder face this question atleast once "Should they patent their products and technology or not? Is it that important? What if you don't patent? Are there other shortcuts? This article delve deeper in to this matter.
Plan for the Chief Intellectual Property Officerjrstorella
The document outlines a plan for a Chief Intellectual Property Officer to strategically manage a company's intellectual property. It recommends forming a patent committee to make IP decisions and develop an IP budget. The plan details strategies for building an exclusionary patent portfolio, ensuring freedom to operate by clearing products of IP barriers, policing competitors, and managing relationships with investors and licensees. The goal is to create company value through the strategic use of intellectual property.
This document discusses how companies can leverage intellectual property (IP) assets through R&D tax credits and intellectual property protection strategies. It provides an overview of different types of IP rights like patents, trademarks, and copyrights. It also outlines the services provided by three companies - Jumpstart identifies innovations eligible for R&D tax credits, HGF helps protect innovations through IP analysis and patent applications, and Metis helps companies monetize unused IP assets through licensing, sales, and using IP as collateral for financing.
Identifying, Protecting, Developing, Managing and Auditing IP
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Partners Melanie Seelig and Mauricio Uribe continued the two-part, comprehensive discussion on trade secrets. The presentation focused on a more detailed exploration of the topic and strategic implications for various scenarios .
Speakers: Melanie Seelig and Mauricio Uribe
The document provides information about the Post Graduate Diploma in Patent Law and Management program offered by the Indian Institute of Patent and Trademark Attorney (IIPTA). The 10-month program aims to train students in various aspects of patent law and intellectual property management. The curriculum covers topics such as patent law, innovation management, patent searching, operations, strategy, finance, and monetization. The program is available in both full-time classroom and part-time distance learning formats. IIPTA also provides information on recruiting companies, education loans, and contact details.
This document discusses IP portfolio pruning and the Questel IP Pruning solution. It provides an overview of the IP Pruning workflow which allows users to audit their patent portfolios, rank patents based on multiple metrics, and identify the most valuable patents to maintain versus those that can be abandoned to save money and resources. The solution computes metrics for each patent and provides detailed reports on the portfolio analysis to help companies make strategic decisions about their IP assets.
Manufacturers Alliance - Product Development Peer Group Workshop.
IP categories.
Intellectual capital.
Patent process timeline.
Identification of IP.
Systemization of IP.
Monitization of IP.
Enforcement of IP.
OEM/Contract manufacturing concerns.
Joint development matters.
Receivership and liquidation Accounts
Being a Paper Presented at Business Recovery and Insolvency Practitioners Association of Nigeria (BRIPAN) on Friday, August 18, 2023.
The document discusses the importance of intellectual property rights (IPR) for startups. It explains what patents, trademarks, designs, and copyrights protect. It emphasizes that IPR registration provides protection and that patents grant exclusive rights to inventions for limited periods. The document advises startups to focus on high-quality patents covering key products and technologies. It suggests that strong IPR helps startups attract investors and partners and block competitors.
Aligning Intellectual Property with Corporate Strategy and Cultivating Corpor...Naim Khan
The document discusses aligning intellectual property (IP) strategy with corporate strategy. It emphasizes that every business strategy involves IP and that an IP strategy helps manage risks and rewards. The key components of an IP strategy are ensuring freedom to operate for launching products/services and managing ideas. Ideas are the most important corporate resource and generating, recording, and evaluating ideas helps secure competitive advantages through patents and freedom to operate. An effective IP strategy involves input from all departments and communicating the importance of IP projects.
Advancing Global Innovation: The Role of PCT Practice and Strategy spkowalski
This document summarizes a presentation about advancing global innovation through education, capacity building, and intellectual property management. It discusses how the Patent Cooperation Treaty (PCT) facilitates international patent filing. It also describes Franklin Pierce Law Center's programs for teaching patent searching and landscape analysis skills, including a clinic where students conduct patent landscapes on technologies relevant to developing countries. The goal is to build human and institutional capabilities in managing intellectual property and technology transfer globally.
Patent Registration in India | Intellectual Property for Entrepreneurship and Start-ups
Preparing provisional and complete specifications; Filing of Indian and PCT applications; Prosecution of Patent applications before the Indian Patent Office
Q. How can we help you?
A. We always welcome potential queries and will be glad to assist you in:
Protecting your Idea / Product / Technology / Business Model / Software / Mobile Application / Website
Providing Legal Advice to start, grow and run your business (Physical / Online / Offline / Cloud)
Providing Advice to avoid legal issues with your email / mobile advertising campaign
Deciding whether you need patent for your business or not
Creating a prototype while avoiding legal issues and overhead expenses
Ensuring your website / mobile application is in compliance with data privacy laws
Deciding proper business structure and ownership
Negotiating with investors and VCs
Creating, Managing and Utilizing ESOPs (Employee Stock Options)
Selecting right name for your business (Trademark Law Issues)
Positioning your brand in market (Trademark Law Issues)
Drafting Contracts and Agreements
Drafting Website terms and Privacy Policies
Getting a fixed quote
Contact Us 24/7
info [at] techcorplegal [dot] com
CambridgeIP: Case Studies Of Recent Client EngagementsCambridgeIP Ltd
CambridgeIP’s experience has shed light on multiple client needs that can be met through the use of patent-based intelligence. The set of anonymised case studies below illustrate some recurring client needs and solutions we have developed to meet these.
Research and Development Tax Credit and Patent Boxmary tierney
This document provides tips for claiming R&D tax relief in the UK. It discusses identifying qualifying R&D projects and costs, capturing salary and other eligible expenses, subcontracting R&D work, and planning remuneration. It also outlines how the UK patent box regime works, including establishing relevant IP income, actively managing intellectual property, and making the necessary election. Key recommendations include thinking widely about qualifying profits and expenses, maintaining R&D spending, ensuring a fair allocation of costs, and making the election if wanting to benefit from the lower tax rate on patent income.
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Many startup founder face this question atleast once "Should they patent their products and technology or not? Is it that important? What if you don't patent? Are there other shortcuts? This article delve deeper in to this matter.
Plan for the Chief Intellectual Property Officerjrstorella
The document outlines a plan for a Chief Intellectual Property Officer to strategically manage a company's intellectual property. It recommends forming a patent committee to make IP decisions and develop an IP budget. The plan details strategies for building an exclusionary patent portfolio, ensuring freedom to operate by clearing products of IP barriers, policing competitors, and managing relationships with investors and licensees. The goal is to create company value through the strategic use of intellectual property.
This document discusses how companies can leverage intellectual property (IP) assets through R&D tax credits and intellectual property protection strategies. It provides an overview of different types of IP rights like patents, trademarks, and copyrights. It also outlines the services provided by three companies - Jumpstart identifies innovations eligible for R&D tax credits, HGF helps protect innovations through IP analysis and patent applications, and Metis helps companies monetize unused IP assets through licensing, sales, and using IP as collateral for financing.
Identifying, Protecting, Developing, Managing and Auditing IP
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Resources from Business Victoria's workshop giving early stage innovators information on the steps you need to take to turn your new product into a commercial reality.
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Partners Melanie Seelig and Mauricio Uribe continued the two-part, comprehensive discussion on trade secrets. The presentation focused on a more detailed exploration of the topic and strategic implications for various scenarios .
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This document discusses IP portfolio pruning and the Questel IP Pruning solution. It provides an overview of the IP Pruning workflow which allows users to audit their patent portfolios, rank patents based on multiple metrics, and identify the most valuable patents to maintain versus those that can be abandoned to save money and resources. The solution computes metrics for each patent and provides detailed reports on the portfolio analysis to help companies make strategic decisions about their IP assets.
Manufacturers Alliance - Product Development Peer Group Workshop.
IP categories.
Intellectual capital.
Patent process timeline.
Identification of IP.
Systemization of IP.
Monitization of IP.
Enforcement of IP.
OEM/Contract manufacturing concerns.
Joint development matters.
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2. Patents can provide a competitive
advantage, when built correctly with:
attention to the path of business
development
awareness of competitive threats
knowledge of the prior art
2
3. Patents work by excluding
A patent has value only when it excludes
others from doing something they really want
to do
If no one wants to do what is patented, the
patent has no value
3
4. Patents work best in
portfolios
A single patent covers only a single invention
and so excludes others only from doing one
thing
If I really want to do what is patented, then I
will try to find another way to do it (by
developing a work-around)
A portfolio of patents will make it harder for
others to develop work-arounds
4
5. Building a valuable patent
portfolio
A portfolio has value only when it covers
what business wants
(Remember: patents work by excluding)
5
6. What does business want?
Imagine how a business can be based on
the technology
What will be the business model?—what
value proposition can the technology offer?
6
7. Focus patent filings on the
business model
Goal: the issued patents should cover technology
at the heart of the value proposition
When the patents issuing in the patent portfolio
cover this key technology, then the portfolio
covers what business wants
7
8. Problems inherent in patent
portfolio building
Patents cannot be obtained instantly but
require a gestation period (typically 1 to 5
years before a patent will issue on an
application)
The competitive landscape changes over
time
• While a patent application is pending, the marketplace
may well change
• Unless the application is planned to cover market
conditions after the patent is issued, it may be useless
8
9. Structuring patent filings for
a shifting marketplace
Focus applications on features having a
potential to make a difference 5+ years
hence
Essential to consider:
• How the marketplace will be shifting over the next
five years
• What the business proposition to be addressed by
the technology should be five years hence
9
10. What will the business look
like five years from now?
What products and processes will/should the
business be selling (and using)?
What products and processes can we expect
the competition to be selling and using?
The answers to these questions go to the
heart of the company’s business plan
An application filed today defines what
protection the business has five years from
now
10
11. What technology should be
targeted to get new products and
services to market?
The targeted technology defines the
patent filing strategy
Craft a filing strategy to cover the planned
products and services as well as potential
work-arounds by competitors
11
12. What should go into the first
application?
The coolest features?
The best possible implementation?
Expansive analysis of principles
underpinning the invention?
12
13. Target for the first
application:
The simplest embodiment having useful
functionality in the marketplace
Analysis should illuminate implementations
and claim breadth; not needed beyond this
Additional embodiments are valuable when
they can be (and are) well described
13
14. N.B.: No previews of coming
attractions!
Half-described embodiments can be cited as
prior art to a later application in which the
embodiment is well described and bar patent
coverage
Less can be more: an application avoiding
half-described embodiments will be more
complete and reduce downstream risk
14
15. Patent filing strategy can
inform the business plan
Steer product development in directions
that are ripe for patenting and
technologically feasible
Coordinate product development and
introductions with patent filings
15
16. Patent strategy and business
strategy can inform one another
But only when the masterminds of each
meet with one another
Required are regular meetings of patent
counsel and general counsel with heads
of business development, marketing, and
technology development (in the
beginning, all of these may be supplanted
simply by the founder!)
16
17. Develop a plan for future
filings
A listing of potential subsequent filings
can be integrated with a listing of existing
filings, so that the portfolio and filing
agenda can be viewed as a whole
This is the patent portfolio listing
17
18. IP Portfolio Meetings
Use the patent portfolio listing
• Place new inventions on it, and indicate timing for filing
• Place existing filings on it, with filing data, pertinent
product lines, and status
Review and update the listing in meetings, so
the listing also becomes an agenda
Have patent counsel update the listing between
meetings
18
19. IP Portfolio Meetings (cont’d)
Items on the portfolio listing can be adjusted
in relation to the business strategy
The business strategy can be adjusted in
relation to items on the portfolio listing
The adjustments must take into account
competition, developments in the market, the
technology, legal proceedings involving the
portfolio and the company, and the budget
19
20. Patents in a portfolio are wasting
assets that must be managed
Patents have a gestation period (typically 1
to 5 years before a patent will issue on an
application)
Patents have only a 20-year duration
• Assuming all annuities or maintenance fees are paid
• Measured from date of filing of the earliest nonprovisional
application leading to issuance of the patent
20
21. Typical time scenario for
new patent filings
t=0: file provisional patent application
t=11.5 months: file nonprovisional (i.e., regular)
U.S. application and/or PCT application (must be
filed by t=12 months)
t=18 months: publication of PCT and
nonprovisional applications
t=29.5 months (if PCT application has been filed):
national phase filings in European Patent Office
(EPO), China, elsewhere depending on budget
(must be filed by t=30 months, with some
exceptions) (Can file in U.S. too.)
21
22. Strategic variation on the
time scenario (1)
Between t=0 and t=12 months: file successive
additional provisional applications as new
embodiments are developed
Each provisional application includes all the
content of the preceding application plus
additional content
Incorporate the content of all these provisional
applications in the nonprovisional and PCT
applications
22
23. Strategic variation on the
time scenario (2), often
valuable, often overlooked
At 12 months < t < 18 months (before publication
of the application), file a new provisional
application covering improvements developed
after filing of the nonprovsional and PCT
applications, and in this way restart a new series
of filings (nonprovisional and PCT filings within 12
months)
When a new application is filed in this time
interval, the previous application will not be prior
art (except only for anticipation purposes in the
EPO)
23
24. Strategic variation on the time
scenario (3), sometimes valuable,
often overlooked
t=0: file provisional patent application
t=11.5 months: file U.S. nonprovisional application
and request nonpublication of the application,
which will be kept secret until issued
t=n months: application is allowed
t=n+1 months, and before issuance of U.S.
patent, file PCT application that does not claim
priority to any previous filing
Benefit of this approach: keeps U.S. application
secret until U.S. patent is obtained, at price of
losing priority for foreign filings
24
25. Patent Licensing and Litigation
Can be addressed in the IP Portfolio
meetings
Licensing-in may be used to expand the
reach of the company’s portfolio, and may be
needed for clearance purposes
Licensing-out, a potential source of revenue
from the portfolio
Litigation, both patent assertion and
defense, can be evaluated in the business
and technology context
25
26. Strategic planning considerations: I
26
Technology in
house?
Patent applied
for?
Yes
Prosecution/
Enforcememt
Yes
No
Search for in-
licensing
opportunities
Evaluate New
Patent Application
Path A:
Start with Market
Need
Path B:
Start with
Innovation
Invent
No
Current
market?
Yes
Significant
Future Market
(e.g. <10 yrs)
No Outlicense or HoldNo
Evaluate New
Patent Application
Yes
29. Making your patent strategy
deal with the competition
Learn what the competition is doing
Develop an integrated view of the
competition and the prior art
Use the integrated view to inform the
patent strategy
29
30. Learn about the competition
SEC filings (esp. Form10-K): EDGAR
filings on SEC website and e.g.
www.secinfo.com (also Lexis, Westlaw)
Competitor web sites & WWW generally
Newspapers, trade journals
Licensing authorities; e.g., FDA Orange
Book:
http://www.accessdata.fda.gov/scripts/cder/ob/default.cfm
30
31. Learn about the competition—
Patent and Technology Searching
www.uspto.gov,
http://worldwide.espacenet.com (EPO
website)
Google Patents (www.google.com/patents)
and Google Scholar
(http://scholar.google.com)
STN database of American Chemical
Society (https://stnweb.cas.org), NIH:
National Center for Biotechnology
Information (www.ncbi.nlm.nih.gov)
31
32. Making your patent strategy
deal with the competition
Learn what the competition is doing √
Develop an integrated view of the
competition and the prior art
Use the integrated view to inform the
patent strategy
32
33. Developing an integrated view
Patent mapping can help
Example: IPVision (www.ipvisioninc.com
and http://see-the-forest.com)
Specific example, courtesy of IPVision—
Ring, Inc., https://ring.com/
33
36. Ring has raised $209 million; CEO says patents
not important to Ring’s success
36
37. Patent landscape map for Ring’s main patent filing
37
Ring’s
published
application
(in yellow
box)
Most
frequently
citing
patent
owner is
colored red
38. Reading the patent landscape map
Each patent box is located horizontally
according to the date of issue
The tail to the left of each patent box
indicates the filing date
Each red line indicates a citation by the
later patent of the starting patent
38
39. Patent landscape map for Ring’s main patent filing
39
Ring’s
published
application
(in yellow
box)
Most
frequently
citing
patent
owner is
colored red
43. An interconnection map shows that
SkyBell has 85 patents with a great
deal of interconnection
43
44. Reading the interconnection map
Interconnection is the result of intentional
reference, by later SkyBell patent filings, of
previous SkyBell patent properties
Such interconnection is often an indication of
a well-developed patent portfolio
Ring would be wise to take SkyBell seriously
44
46. Making your patent strategy
deal with the competition
Learn what the competition is doing √
Develop an integrated view of the
competition and the prior art √
Use the integrated view to inform the
patent strategy
46
47. Using the integrated view to
inform the patent strategy
Must reflect the technical and market position and
goals of the company
Use regular, joint meetings to tune the IP Portfolio:
• Patent counsel
• General Counsel
• Marketing head
• Technology head
• Business development head
47
48. IP Strategy Sessions
Share information and insights
Develop and refine goals
Review position of company in relation to
competition and company goals
Agree on filings and budget consistent
with these goals and the competitive
context
48
49. Your patent strategy serves your business
strategy and provides business leverage
You know what the competition is doing
You have an integrated view of the
competition and the prior art
The integrated view informs the patent
strategy and the business strategy
49
50. Developing the portfolio
efficiently
Use knowledge of the prior art to craft
effective claims
Focus on early allowance of claims to
useful subject matter
50
51. Measure twice, cut once
Develop a working knowledge of the prior art
Craft claims carefully, so as to be directed to
important embodiments, while clearly
distinguishing the prior art
51
52. Eyes on the prize
Goal: early allowance of useful subject
matter
Seek to advance prosecution toward
allowance with every response
Use examiner interviews wherever possible
and preferably before filing each response
52
53. Faster, better, lower cost
Avoiding a round of office-action-and-
response shortens the time to issuance of
a patent, keeps the patent record shorter,
and reduces prosecution costs
53
54. Conclusion: for a portfolio to
provide competitive advantage
Develop and use an integrated view of the
competition and the prior art
Structure the portfolio to cover products having useful
functionality in the marketplace 5+ years hence
Use knowledge of the prior art to craft claims carefully
and focus prosecution on early allowance of useful
subject matter
Review and plan the portfolio in regular meetings of
the masterminds of patent strategy and business
strategy
54