For Reference€¦ · –enough care is not taken in their development to maximize the chances that...
Transcript of For Reference€¦ · –enough care is not taken in their development to maximize the chances that...
FINNEGAN | Strategic Patent Filings1
**** For Reference ****
Strategies for Effective and Cost Efficient Global Patent Prosecution
Identifying which innovations should be patented and where can be a difficult task to undertake. The presenters will provide an overview of what is considered patentable in the United States, Europe, Japan and China, and provide practical tips on developing a robust patent program.
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Strategies for Effective and Cost
Efficient Global Patent Prosecution
Louis M. Troilo and Clara N. Jimenez
IFAI EXPO, Dallas, TX October 15-17, 2018
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What is Patent Strategy
• There is a difference between having
patents and having a patent strategy.
• A patent strategy is a plan to use patents to
advance a company’s business goals.
• Often, companies develop a portfolio of
patents, with no clear goal in mind other than
to say “we have a patent on that.”
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Why Do We Care? - $$
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The Biggest Problem Facing Patent Owners is …
Worthless patents.
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How Big a Problem is It?
• Analysts agree: 95%-97% of patents are
worthless.
• Not because patents are inherently
worthless, but because:
– enough care is not taken in their development to
maximize the chances that they will block
competitors, e.g., no business strategy; and
– enough thought is not given to where to seek
protection, e.g., no global strategy.
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The task of preparing a U.S. patent applicationdisclosure is not an easy one:
"There are few, if any, legal documents moredifficult to craft, more fraught with pitfalls thanpatent applications[.]”
Circuit Judge Newman dissenting in Energizer Holdings, Inc. v. International Trade Commission, 2008 WL 1791980, *10 (Fed. Cir. April 21, 2008) (not published).
All Patents Are Not Created Equal
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An Issued Patent Is Just the “Tip of The Iceberg”
Many Variables Can Change the Worth of a Patent
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The Lighter Side of Patent Valuation
“Valuing patents isn’t rocket science. It is
actually much more difficult.”
© Copyright 2011 | IncreMental Advantage LLC
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• Unsystematic portfolio development often
fails to add real value.
• Planned portfolio development
– Protects revenue streams
– Blocks competitors from not only copying your
specific product, but from offering an acceptable
competing product
– Adds perceptible investor value
Value Added by Adopting a Patent Strategy
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What is a patent strategy?
Patents are business tools. In
patent strategy, each proposed
patent is tested before it is filed
to determine if it is likelihood of
blocking competition. If it doesn’t
meet the criteria, money is not
wasted on that patent.
Applying a similar level of discipline as applied to strategic decisions
about finance, product development, R&D, marketing, etc.
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Title
Inventor’s names
Serial number
Abstract
Filing date
Issue date
13
Owner
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TitleSpecification
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Claims
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What are investors looking for?
1) Valuable technology
2) Quality IP that prevents others
from taking the valuable
technology
3) No clouds over ownership
4) Freedom to operate in
commercially valuable regions
5) No adverse written admissions
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Recipe for Good Patents
Blocking claims
+
Avoids prior art
+
Non-restrictive technical description
+
Non-restrictive patenting process
+
Compliance with dozens of rules
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Recipe for Good Patent Strategy
• Marketing driven approach
• Patent technical features you expect that
your competitors will need.
• Target claims to your revenue streams.
• Target countries or regions that are most
commercially significant.
• Take advantage of international laws
and treaties for cost effective
prosecution
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Market Driven Approach
• Patent the features you
expect to tout in the market
to distinguish your invention
• What do you tell investors?
• What do you tell prospective
customers?
• What will customers
demand?– Motorola Mobility/Google example
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Know Your Competition
Patent the technical features you expect that
your competitors will need
Points of criticality, not simply nice to have features.
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Target claims to your revenue streams
• Which infringers are going to
damage your company the
most?
• The companies who sell and
distribute infringing products?
• Individuals who use the
infringing products?
• What are the quantifiable
damages for each?
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The Patent Life-Cycle - Strategies
• Pre-filing and drafting strategies
– where and when to file
– drafting for multiple jurisdictions, eligible subject
matter
– assigning inventorship
• Prosecution strategy: speed and efficiency
– priority and the PCT system
– expediting examination
• Prosecuting with an eye to the future
– ability to amend after grant
– enforceability and proving infringement
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Pre-Filing and Drafting Strategies
• Where to file
• Drafting for multiple jurisdictions
– Different claim types and formats
– Eligible subject matter
– Drafting to allow for future amendment
• When to file
– How much data to include
• Assigning Inventorship
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Where to File?
• Where will the invention be made?
• Where will the invention be marketed?
• Where are potential infringers located?
• Are the inventions patent eligible in a given
country?
• Ease of prosecution
• Cost
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Drafting for Multiple Jurisdictions
• Consider multiple claim categories –
different countries will allow different claim
types
– product
– intermediate
– composition
– process
– method
– use
– purpose-limited product
– product by process
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Who? What? Where?
Patents in the Textile Industry
Going back 4 years, let’s look at:
• the types of patents being
filed,
• who is filing them, and
• where they are being filed.
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Textile Industry - What is being patented? Breakdown by Technology Cluster
Understand what the market is doing
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Textile Industry – Who is getting patents?Textile Patent Breakdown by Assignee
Understand who’s your competition
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Textile Industry – Who is getting patents?Apple’s Textile Patent Portfolio
Understand who is your competitor?
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Textile Industry – Where are patents being filed?
Understand where’s your competition
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Advantageous Use of International Offices
Using the right foreign office as a platform
to start international prosecution
• Goal is expedited examination to embrace
prosecution
• Leveraging those foreign offices that are
favorable to expedited examination, e.g.
Australia, Canada, EP
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Advantageous Use of International System
Patent Prosecution Highway (PPH)
• The PPH is a set of initiatives for providing
accelerated patent prosecution procedures
by sharing information between some patent
offices.
• Permits each participating patent office to
benefit from the work previously done by the
other patent office
• Coordinate international strategy
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Concluding Thoughts
• Ask the right questions
• Apply the right strategy
• Leverage the right tools
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Speaker InformationLouis Troilo([email protected]/1.202.408.4246)
• Represents Fortune 100 companies to startups and
universities looking for assistance in patent procurement,
portfolio analysis, opinion drafting, and intellectual
property licensing.
• Former patent examiner and material science technical
expertise, have allowed Lou to lecture around the world
on the business value of obtaining and protecting IP
Clara N. Jimenez([email protected]/1.202.408.4253)
• Extensive experience in chemicals and related
applications, including catalysts, polymers, printing inks,
nanomaterials, composites, and industrial manufacturing
• Focuses her practice on various aspect of intellectual
property protection for clients in the chemical and
material science industries, including patent prosecution,
counseling and litigation
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DisclaimerThese materials are public information and have been prepared solely
for educational and entertainment purposes to contribute to the
understanding of U.S. intellectual property law. These materials reflect
only the personal views of the authors and are not a source of legal
advice. It is understood that each case is fact specific, and that the
appropriate solution in any case will vary. Therefore, these materials
may or may not be relevant to any particular situation. Thus, the
authors and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
cannot be bound either philosophically or as representatives of their
various present and future clients to the comments expressed in these
materials. The presentation of these materials does not establish any
form of attorney-client relationship with the authors or Finnegan,
Henderson, Farabow, Garrett & Dunner, LLP. While every attempt was
made to ensure that these materials are accurate, errors or omissions
may be contained therein, for which any liability is disclaimed.
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Thank You!