The Intellectual Property Section proudly presents #12 ... · PDF fileComputational Studies on...

The Intellectual Property Section proudly presents… #12 WAYS TO PROTECT YOUR NEW PRODUCT –

PUTTING THE INTELLECTUAL PROPERTY STRATEGIES IN PLACE

Eugenia Garrett-Wackowski - Kilpatrick Townsend & Stockton LLP

Babak Kusha - Kilpatrick Townsend & Stockton LLP Mark Mathison - Kilpatrick Townsend & Stockton LLP Gwen Peterson - Kilpatrick Townsend & Stockton LLP

Joseph Snyder (Moderator) - Kilpatrick Townsend & Stockton LLP Maneesh Gupta - IP Counsel, Proteus

Timothy Joyce - Patent Counsel, Bayer U.S. Wouter Roorda - Vice President, Nano Precision Medical, Inc

Agenda

Part I: Panel presentation and discussion on ways to protect a new product from an Intellectual Property (IP) perspective. Different IP protection strategies will be discussed, including patent and trademark protection. Part 2: Expert Panel discussion on the various IP strategies companies use to protect their products.

Kilpatrick Townsend

Walnut Creek Partner Bios

Eugenia Garrett-Wackowski Partner

Walnut Creek | 925 472 5005 [email protected]

Services Intellectual Property

Eugenia Garrett-Wackowski focuses her practice on various areas of intellectual property law associated with creating and maintaining intellectual property assets, particularly in the areas of chemistry and biotechnology. Working directly with in-house counsel and scientists at academic institutions, start-up biotechnology and drug discovery companies and large pharmaceutical companies, she has counseled clients and prepared and obtained patents in many technical areas, including organic chemistry, inorganic chemistry, biochemistry, molecular biology and immunology. Ms. Garrett-Wackowski regularly assists clients with patent portfolio management, U.S. and foreign patent prosecution, interference strategy, due diligence reviews, freedom to operate analyses, validity and infringement opinions and technology licensing.

Publications, Articles & Speeches Advanced Patent Drafting Strategies, August 2011

Professional & Community Activities American Bar Association, Member

American Chemical Society, Member

San Francisco Bar Association, Member

World Intellectual Property Trade Forum, Member

Education Santa Clara University School of Law, J.D. (1991) University of Notre Dame, M.S., Biotechnology and Chemistry (1990) University of Notre Dame, B.A., Chemistry and Psychology (1986)

Bar Admissions California (1991)

Admissions U.S. Patent and Trademark Office U.S. District Court for the Northern District of California

Babak Kusha Partner

Walnut Creek | 925 472 5000 San Francisco | 415 273 7512 [email protected]

Services Patent Counseling & Prosecution, Acquisition Due Diligence

Industries Medical & Surgical Devices, Retail & Consumer Goods, Semiconductors & Electronics, Technology

Babak Kusha is a partner in the firm’s Intellectual Property practice and is the Co-Chair of the Mechanical and Medical Device Patent team. Babak's practice emphasizes patent prosecution and counseling, particularly in the electromechanical, mechanical, biomedical, software, semiconductor processing, integrated optics and signal processing arts. His practice includes prosecuting design and utility patent applications for his clients in the communications, consumer products and electronics, construction and heavy equipment, equestrian arts, food and beverage, furniture, medical devices, jewelry and luxury items, lifestyle and apparel, power generation, pumps and turbo machinery industries. He has extensive experience in the field of design law, including strategic design protection and enforcement including coordinating U.S. and International utility and design patent, trademark and copyright protections. Babak counsels clients on various aspects of intellectual property law, including clearance or freedom-to-operate, invalidity and non-infringement issues, competitive analyses, patentability opinions, invention identification and assessment, as well as preparation and prosecution of patent applications. With 15 years of experience as a Registered Patent Attorney and 12 years as a Mechanical and Nuclear Engineer, Babak advises clients on patent strategy for new products, including assisting inventors with invention disclosures; he works closely with the product management team, technical directors, design staff, technical staff and in-house corporate counsel, IP and patent attorneys. Prior to his work in the legal field, Babak worked for 12 years as an engineer. He held his first engineering position at ABB Impell Corporation, where he specialized in nuclear and fossil fuel power. He then worked with Fluid Dynamics International, initially working with computational fluid dynamics and later opening and managing Fluent's Western Region office. His clients included many of the world's leading automotive, aerospace, defense, electronic and power utility corporations.

Publications, Articles & Speeches Protecting Product Designs, Configurations and Packaging Using Design Patents, Trademark and Trade Dress, February 2016

Protecting Product Designs, Configurations and Packaging, August 2015

US Patent Prosecution and Portfolio Development Strategies, August 2010

Studies on the Enhancement of Microchannel Heat Sinks with Mirco-Heat Pipes, May 1998

Heat Sink Numerical Simulation with IcePak using Compact Heat Sink Modeling Techniques, October 1997

Computational Studies on Enhanced Thermal Management of Outdoor Enclosures Using Natural Convection, June 1997

Dynamic Analysis of Hydraulic Systems Using Network Simulations, March 1992

“Design Patents: Do New Component-Based Damages Encourage IP Knockoffs?,” , April 2017

Professional & Community Activities American Bar Association

American Intellectual Property Law Association

Bar Association of San Francisco

Patent and Trademark Office Society

San Francisco Intellectual Property Law Association

Education Illinois Institute of Technology, J.D. (1999) University of Wisconsin-Madison, B.S. (1986) University of Wisconsin-Madison, B.S., Mechanical Engineering (1984)


Admissions U.S. Patent and Trademark Office

Mark P. Mathison P.E. Partner


Services Patent Litigation, Patent Counseling & Prosecution, Internet, Acquisition Due Diligence, Licensing

Industries Aerospace & Defense, Semiconductors & Electronics, Technology, Telecommunications

Mark Mathison focuses his practice on patent prosecution and counseling for electronics, electromechanical devices, and mechanical technologies as well as software, Internet, network, e-commerce, and other computer-related technologies. His legal experience includes drafting and prosecuting patent applications, analyzing patentability and freedom-to-operate issues, and performing patent infringement analyses of competitors' products. Mr. Mathison has prepared trademark registrations along with trademark search and infringement analyses. He also has experience prosecuting design patents for a well-known toy brand, supported patent litigation in inequitable conduct matters, and won a domain name dispute in the United Kingdom. He is registered to practice before the United States Patent and Trademark Office.

While in law school, Mr. Mathison served as an extern for the Honorable R. Gary Klausner, U.S. District Court for the Central District of California. He also served on the boards of the Journal of Law and Technology and Moot Court and was president of the Mock Trial organization.

Prior to his legal career, Mr. Mathison worked eight years as an aeronautical and electrical engineer at Raytheon Missile Systems/Integrated Defense Systems in Massachusetts, Arizona, and California. There, he acquired real-world experience in flight-critical embedded software systems, avionics, anechoic chamber testing, and flight testing. Mr. Mathison programmed extensively in C/C++/MFC, HTML/JavaScript/ASP, and Visual Basic for telemetry analysis and data presentation. Additionally, Mr. Mathison worked during and after graduate school with designated engineering representatives for FAA-certifying airplane and helicopter performance and noise.

Mr. Mathison holds a private pilot's license and is licensed by the State of California as a Professional Engineer (P.E.) in electrical engineering.

Mr. Mathison was recognized as a Northern California "Rising Star" for Intellectual Property in 2017 and the four years immediately preceding by Super Lawyers magazine.

Publications, Articles & Speeches The Post-Alice Landscape: An evaluation of cases and US Patent and Trademark Office guidance, April 2015

Startup Legal: Top 10 Legal Questions Every Founder Wants to Get Answered, April 2016

Divided Infringement: Fed. Cir. To Go Back To The Drawing Board, September 2014

“Polling the Bar: An Unscientific Survey of Our Colleagues on Alice ,” IP Watchdog, April 2016

Education University of California at Los Angeles, J.D. (2007) University of Washington, M.S., Aeronautical Engineering (1995) Harvey Mudd College, B.S., Engineering, Dean's List (1994)

Bar Admissions California (2007) Washington (2008)

Admissions U.S. Patent and Trademark Office (2005) U.S. District Courts for all Districts of California U.S. Court of Appeals for the Ninth Circuit

R. Gwen Peterson Partner


Services Intellectual Property, Licensing, Trademark, International Strategy

Industries Retail & Consumer Goods, Consumer Goods, Food, Restaurant & Beverage, Technology, Electronic Equipment & Software, Chemistry & Life Sciences

Gwen Peterson has been practicing law in the intellectual property field for over 20 years and is an experienced transactional and trademark practitioner. Ms. Peterson’s practice focuses on intellectual property licensing and related transactions, with an emphasis on the strategic negotiation, drafting and review of agreements having intellectual property implications. She has experience with a broad range of intellectual property-related agreements, including patent and technology license agreements, trademark and copyright license agreements, asset transfer agreements, patent and trademark assignments, material transfer agreements, research and collaboration agreements, joint development agreements, research consulting agreements, marketing and merchandising agreements, co-branding agreements, co-existence agreements, software licenses, software development agreements, copyright license agreements, artist agreements and a variety of web-related agreements. Ms. Peterson also assists clients with large-scale global recordals of intellectual property assignments and licenses.

In additional to her transactional practice, Ms. Peterson maintains an active practice in trademark portfolio management, including trademark clearance, domestic and international trademark prosecution and the development of international and domestic trademark protection strategies. Ms. Peterson also handles trademark and licensing due diligence for clients involved in asset acquisitions and in funding events.

Ms. Peterson works with clients in a broad range of industries, including the chemical, pharmaceutical and biotechnology fields, the consumer food and alcoholic beverage space, the software industry and the financial services industry. Her clients span the size spectrum, from individual intellectual property owners to publicly traded companies to large privately held companies, and she enjoys the opportunities and challenges that each brings to the table. Ms. Peterson has been recognized as a Northern California “Super Lawyer” for Intellectual Property by Super Lawyers magazine, named one of East Bay Business Times’ “40 under 40," and listed in the 2017 edition of World Trademark Review 1000 – The World's Leading Trademark Professionals.

Publications, Articles & Speeches Protecting Product Designs, Configurations and Packaging Using Design Patents, Trademark and Trade Dress, February 2016

Protecting Product Designs, Configurations and Packaging, August 2015

“Putting the Diligence in Intellectual Property Due Diligence: Cautionary Tales of Those Who Didn’t,” Bright Ideas Newsletter, September 2016

“Patent Licensing Considerations,” Association of Corporate Counsel, August 2013

“Patent Licensing ,” Association of Corporate Counsel, January 2013

Professional & Community Activities American Bar Association

Contra Costa Bar Association

Licensing Executives Society

International Trademark Association (INTA)

Middle School STEM Program - Facilitator (2015)

Elementary School Foundation - Board Member (2006-2013)

Education University of Texas Law School, J.D., with honors (1991) Texas A&M University, B.S., Biomedical Science, summa cum laude (1987)

Bar Admissions California (1992) Texas (1991)

Admissions U.S. Patent and Trademark Office

Joseph R. Snyder Ph.D. Partner


Services Intellectual Property, Patent Counseling & Prosecution

Joseph Snyder is the Managing Partner of the firm's Walnut Creek office. He focuses his practice on patent prosecution and counseling, emphasizing patent drafting, patent procurement, client counseling and opinion writing, primarily in the chemical arts, biotechnology, life sciences and clean technology. He counsels clients on planning and portfolio analysis for patent protection, including strategic review of technologies' commercial potential, enforcement of patent rights and defense of infringement allegations. Dr. Snyder represents U.S. and foreign companies, such as pharmaceutical companies, diagnostic laboratories, universities and start-ups in all areas of intellectual property counseling and protection.

He conducts and performs due diligence investigations in connection with commercial transactions, such as mergers, acquisitions and the establishment of strategic business alliances. These investigations involve intellectual property including patents, technology licenses, acquisition agreements and asset purchase agreements. Dr. Snyder advises on the creation of start-ups and their patent portfolio development. He coordinates and negotiates the transfer and licensing of intellectual property as it relates to office of technology transfer agreements, collaborative/sponsored research agreements and other transfer agreements.

His technology experience includes small molecules, pharmaceutical formulations, drug delivery technologies, medical diagnostics, nucleic acid assays, nucleic acid sequencing technologies, dyes and clean technology, such as fuel cells.

Before joining the firm, Dr. Snyder worked as a patent attorney for Zeneca Ag Products in the areas of patent drafting, patent prosecution and patent validity opinions.

Prior to joining the legal profession, he was a senior scientist in their analytical department doing organic structural analysis using NMR and mass spectrometry.

Dr. Snyder was recognized as a 2014, 2015, 2016 and 2017 Northern California "Super Lawyer" in the area of Intellectual Property by Super Lawyers magazine.

Experience Highlights Patent reexamination for Prometheus Laboratories Inc. Represented Prometheus Laboratories, Inc. owner of an Orange Book listed branded drug, Lotronex (alosetron hydrochloride), indicated for women with severe Irritable Bowel Syndrome. Prometheus Labs bought the franchise from GSK several years ago, however US Patent No. 6,284,770 drawn to a method for treatment was not listed in the Orange Book. A reexamination strategy was devised to ensure patentability of the claims that covered the indication. After an initial PTO action denying the reexamination request, a petition was filed citing further relevant facts. Thereafter, the petition was granted. After successful prosecution of amended claims, a reexamination certificate issued providing valid patent coverage for Lotronex. The reexamined patent is now listed in the Orange Book.

Publications, Articles & Speeches Advanced Patent Prosecution Workshop 2012: Claim Drafting & Amendment Writing, August 2012

Claim Drafting & Amendment Writing, August 2011

Professional & Community Activities International Association for the Protection of Intellectual Property, Standing Committee on Pharma and Biotechnology for the US National Group

Education University of San Francisco School of Law, J.D. (1995) University of Notre Dame, Ph.D., Chemistry (1987) University of Akron, M.S., Chemistry (1983) Xavier University, B.S., Chemistry (1980)


Admissions U.S. Patent and Trademark Office (1995) Supreme Court of the United States (2011) Supreme Court of California (1995)

Expert Biographies

Wouter Roorda is Vice President of Pharmaceutical Product Development at Nano Precision Medical, and a registered Patent Agent. In his current position he is responsible for the pharmaceutical aspects of the development of a novel, membrane-controlled implantable device for the treatment of type II diabetes. Within the company he is also responsible for the coordination of various forms of IP to protect developed technologies. His previous experience includes over 25 years of research and development of medical devices and drug-device combination products. Most of his work has focused on the early phases of product development, often in close collaboration with the legal department to secure the generation of the relevant IP. He is a named inventor on 73 US patents. Maneesh Gupta has experience in all facets of intellectual property law, including patent litigation, patent prosecution, and everything in between. He spent the first 4+ years of his legal career at law firms focusing on patent litigation, and the next 4+ years at law firms focusing on strategic patent prosecution. His current in-house role includes handling all aspects of intellectual property for Proteus Digital Health, which has developed the world’s first Digital Medicine offering that measures medication treatment effectiveness and helps physicians improve clinical outcomes.

© 2017 Kilpatrick Townsend

Ways to Protect Your New Product: Putting Intellectual Property Strategies in Place

CCCBA MCLE Spectacular 2017

Joseph R. Snyder, Ph.D., Kilpatrick Townsend & Stockton LLPBabak Kusha, Kilpatrick Townsend & Stockton LLPMark P. Mathison, Kilpatrick Townsend & Stockton LLPR. Gwen Peterson, Kilpatrick Townsend & Stockton LLPEugenia Garrett-Wackowski, Kilpatrick Townsend & Stockton LLP

We got a new puppy and had difficulty house training it. So, we realized that it is important to teach a puppy to relieve itself in a designated area, or a specific location within the home.

We know that puppies can be taught to perform a specific behavior if they are rewarded after performing the behavior.

Rewarding the puppy helps to establish a positive association with the performance of the behavior.

This is classical conditioning and Pavlov’s dog

experiments.

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My Invention

3

Figure of the House -Training Device

The house-training device comprises a pad and a treat dispenser operably connected to one another via a control circuit. In operation, the user can encourage his or her pet to relieve itself on the pad.

The pad includes a sensor to determine if the pet has done its business on the pad.

If the pet has done its business on the pad, the treat dispenser is adapted to dispense an edible treat. In some embodiments, an audio unit is further provided that plays a pre-recorded message of encouragement for the pet (“Good job, Spot!”) when the pet has done its business on

the pad.

This helps to reinforce the behavior of the pet.

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House -Training Device

The device for house training a pet includes a pad and a treat dispenser. The pad comprises a flat panel having an upper surface on which a disposable, absorbent sheet is placed. The pad includes fasteners to secure the sheet onto the pad. A sensor is within the pad, to detect if a pet has done its business.

If the sensor detects that the pet has done its business, a control circuit causes the treat dispenser to automatically dispense a treat to reward the pet.

The user can then dispose of and replace the disposable sheet.

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The Invention

• advertising promotions• brands• business relationships• business workflows• contracts• customer lists• domain names• future product ideas• product designs• internally developed software• internal studies/reports• licenses (to do something)• location of manufacturing• manufacturing processes• product or service names• results and data from experiments

6

Intangible Assets – How to Protect

Patent

Copyright

Trademark

Trade Secret

• Trade Dress– product packaging– product design

• Design Patent– ornamental design of a product

• Mask Works– 3D pattern of semiconductor chips

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Other protections

• Utility Model (foreign only)– a.k.a., “petty patent,” “innovation patent”

– unexamined, short term

• Vessel Hull Designs– actual vessel hulls only

• Plant Varieties– sexually reproduced or tuber propagated plants

• Geographic Indicators– “Champagne”

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Other protections (continued)

• Consider how it works - the structure of the device – All the elements / pieces - how do they fit together?

• Disposable sheet / pad/ fasteners/sensor• Treat dispenser• Controller interfaces with the sensor and the treat dispenser

– How is this device different from what’s out there?

• What makes it unique?• A Device claim:

– A pet-training device, comprising:• Pad

– Moisture sensor• Snack dispenser• Controller couples moisture sensor in the pad w/ snack dispenser

– Controller also Plays audio

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Patentable Mechanical Aspects

• Consider how it’s made (or used**) – method claims– Any unique processes? Molding? Casting? Process controls?

• A method of making a pet-snack dispenser• A method of making a moisture-absorbent pad• A method of a making the pad • A method of assembling the moisture sensing pad

• By now we should see other possible device claims?– A moisture sending pad by itself? Etc.

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Patentable Mechanical Aspects

• Consider design patents to protect how it looks• Consider augmenting the device in a fanciful way to

“add ornamentation” to make it look uniquely different

or just plain different from all other pet-trainer products taking up shelf space at the retailers.

• Unique packaging?• Color? Surface ornamentation? Relatively Easy to

do! • “The industrial design” of the pet-trainer

– If you can conceptualize it, and it’s unique,

– Then it’s protectable by design patents.

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Other Mechanical Aspects

• Disposable moisture absorbing pad– Composition of matter claims directed to the disposable pad

• Sorbent materials• Wicking layer• Backing layer• Sensing elements• Ordorants• Anti-microbial agents

– Method of making the disposable pad– Method of using the disposable pad

• Sensor technology– Are unique materials used to detect one chemical from another

(e.g., urine vs. water)• Any other surface treatments of any sort?

– Cooling or warming elements• Does the disposable moisture absorbing pad have other uses?

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Patentable Chemical Aspects

• A disposable pad comprising: a fluid holding layer arranged on the top of the disposable pad, the fluid holding layer comprising sorbent media to hold fluid deposited on the disposable pad; sensing elements responsive to contact with the fluid; a wicking layer arranged between the fluid holding layer and the sensing elements, the wicking layer comprising a wicking material arranged to wick fluid from the sensing elements to the fluid holding layer such that the fluid is held in the fluid holding layer and the sensing elements are non-responsive; and a backing layer beneath the wicking layer, the backing layer preventing fluid from transferring to a surface supporting the disposable pad; a moisture detector sending a trigger signal when at least one sensing element responds to the fluid deposited on the disposable pad

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Exemplary Composition of Matter Claim

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Patentable Software, Electronics Aspects

Sensorin pad

SpeakerControl circuit Dispenser

(solenoid)

• Sensor (input)

connected to

• Control Circuit

connected to

• Dispenser (output) and Speaker (output)

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Connected pieces

connected to• Server or Smart Phone

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Software Patents

ProcessingRaw material Refined product

ProcessingRaw material Refined product

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Sample Software Patent Claim

Source: U.S. Pat. No. 8,335,678

Preamble – “method”

Step 1 – “receiving”

Step 2

Step 3

Step 4

Step 5 – “sending”

thereby clause

Top Five Licenses:

MIT license, 26%() GNU General Public License v2.0, 21% Apache 2.0 license, 16% GNU General Public License v3.0, 9% BSD license, 6%

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Open Source Licenses

Source: Keller et al., “A Few Things To Consider Before Patenting Blockchain Tech,” Law360, 9/27/2016, 5 pgs.

• Online Registration with Copyright Office

• Submit first and last 25 pages of source code*, screen shots

• Submit physical copy of CD-ROM/DVD, hardcopy of user manual if that is how they are published

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Copyright ©

Definition: Any secret formula, pattern, device, or compilation of information used by the company that gives it an advantage over competitors and is actively protected.

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Types of IP: Trade Secrets

Must keep secret Take active steps to protect trade secrets No Expiration

Trade secret rights last forever if properly protected

May loose some rights to a trade secret if someone else patents it

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Trade Secrets

Employment/Contractor agreements addressing confidentiality of IP.

Train new employees to avoid use of trade secrets or IP from prior employer.

Non-Disclosure agreements with vendors and partners.

Identify trade secrets as “PROPRIETARY” and take action to protect them (e.g., computer, e-mail, document control, security).

Consider publication policy that requires review prior to technical journal publications and presentations.

Remind departing employees of confidentiality in exit interviews.

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Protecting Trade Secrets

Definition: A trademark includes any word, name, symbol, slogan, or device (such as a logo design), or any combination of them, used by a manufacturer or merchant to identify its goods or services and to distinguish them from those manufactured, sold or offered by others. Source identifier: Indicates the source of the product/service

Distinguishing: Distinctively identifies the product/service to avoid customer confusion

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Types of IP: Trademarks

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Well-Known Examples

Credit: https://www.sporcle.com/games/g/corplogos

Trade dress refers to the overall appearance of a product, including the look and design of the packaging and/or the product itself.

Example: Coca-Cola bottle

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Types of IP: Trade Dress

“Trademark” (TM): Used with Goods Products, tangible items

“Service Mark” (SM): Used with Services Offers to conduct research, sell, supply, repair, consult,

maintain, etc.

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Trademark or Service Mark?

• Trademark rights accrue in the US based on use• Use = Life: Rights remain in effect as long as the

mark is used• Federal Registration “®” enhances rights and

damages• TM for products and SM for services• More Info: www.USPTO.gov

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Trademark Tidbits

Distinctive Is the type of word or phrase that is actually

protectable as a trademark

Distinguishable Doesn’t infringe the rights of others

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Selecting a Trademark

COINED EXXON gasolineKODAK photographic supplies

Inherently Distinctive

ARBITRARY/FANCIFUL

COBRA golf clubsAPPLE computers


SUGGESTIVE CHICKEN OF THE SEA tuna fishROACH MOTEL insect traps


DESCRIPTIVE RAISIN BRAN cerealAMERICA’S BEST POPCORN

popcorn

May Acquire Distinctiveness Through Use

GENERIC Shoes for shoesLaptops for computers

Not Registrable

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“Spectrum of Distinctiveness”

COINED PUPHOUHOUPSSTOPEE


ARBITRARY/FANCIFUL

TITANGIRAFFE


SUGGESTIVE NO MORE PUP-PEESUPER PUP


DESCRIPTIVE WORLD’S BEST PUPPY TRAINERHOUSE BREAKER

May Acquire Distinctiveness Through Use

GENERIC Puppy Trainer Not Registrable

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Our Puppy House Training Product

Similarities in marks Relatedness of goods and services Possible descriptive meaning Distinctiveness Dilution Aggressive trademark owners

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Distinguishable Marks: Trademark Searches

Expensive litigation

Disruption of business

Loss of good will

Costs to convert from unavailable mark to available mark

32

Timely Searching Can Avoid

Trademark Timing Issues

Search once potential mark(s) are chosen as it will only get more difficult to change

Consider Federal Registration prior to use if mark will ultimately be used in interstate commerce

Choose foreign filings to match product footprint Use not required prior to filing, but use should be

expected in the next 4 years or so to avoid abandonment/cancellation of the application/issued registration for failure to use

Trademark rights do not expire as long as the mark is in use

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Trademark Pointers

Encourage clients (internal or external) to pick several possible names to chose from after search results indicate those “cheapest” to adopt

Properly label marks with “TM” or “®” to enhance rights and damages

Establish marking guidelines that the organization follows to avoid self-inflicted damage to marks

Watch for and remedy any infringement/dilution/genericide of mark

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Market Driven Approach to IP

Analyze product and future products to determine what differentiates your product in the market place E.g., “Cleans stains 20% better,” “10% faster”

Focus IP on those innovations that give market advantage

Determine reasonable budget and IP tools to utilize.

Judiciously pick the best ideas from both the technical perspective and the marketing perspective.

Feedback: Accentuate in your marketing those ideas that have IP protection.

Regularly re-evaluate expenses and abandon IP that is less strategic.

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Six Important IP Protection Strategies Employment/contractor/vendor agreements that address

ownership Secure copyright and patent rights Follow-up with Express assignment of filed copyrights and patents

NDA agreements with vendors, customers and partners Avoids public disclosure of patent ideas and protects trade secrets

Trade secret protection program Case law requires active steps to protect trade secrets

Encourage Patent Filings Incentives are common in larger organizations

Trademark protection of brands Regularly register copyrights, but have outside counsel handle

the trademark and patent filings

34

Thank You!

Contact Information

Joseph R. Snyder, Ph. D., PartnerWalnut Creek, [email protected]

Babak Kusha, PartnerSan Francisco, [email protected]

Mark P. Mathison, P.E., PartnerWalnut Creek, [email protected]

R. Gwen Peterson, PartnerWalnut Creek, [email protected]

Eugenia Garrett-Wackowski, PartnerWalnut Creek, [email protected]

1

© 2017 Kilpatrick TownsendNovember 17, 2017

MCLE SPECTACULARExpert Panel

• IP Counsel for Proteus Digital Health

• Your background and experience

• Your Product

Maneesh Gupta

Your Product

• How are you protecting it?

2

• Vice President, Nano Precision Medical


• Your Product

Wouter Roorda

Your Product


3

2

• IP Counsel for Bayer


• Your Product

Timothy Joyce

Your Product


4

1. What is your role within the companya. How does the legal function interface with

research and development in your organization?2. Does your company have a point person for invention

disclosures?

Questions for the Panelists

3. Discuss the competitive landscape and freedom to operatea. Are there other rights that need to be obtained to

practice the technology?4. What is a significant concern with regard to IP

protection in your field?

5

5. Each of you are involved with FDA regulations.

6. How do FDA regulations affect your patent strategies?

Questions for the Panelists

7. Explain how a small company may approach patent strategy differently than a large company?

8. How do you align IP protection with your business goals?

6

3

• Funding is usually tight so patent strategy must be focused, but not ignored

• May in-license technology to get a competitive advantage• Small companies are “under the radar” of large companies for

some time period so take advantage of that• A stable of patents must be developed before a large company

Patent Strategies: Small Companies and Startups

p p g p ytries to crush them (success = on radar)

• The quality of the patents is more important than the quantity (warrants searching and careful participation)

• Foreign filing may be started in the hope that funding will soon follow to pay for the large expenses that soon follow

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• Large companies want to protect their markets with large portfolios of patents

• Defend any lawsuit by finding their own patents to assert• Cross licenses done with competitors with their own large

portfolios• The more patents the better to bury your competitors in litigation

Patent Strategies: Large Companies

p y y p gand the associated legal fees

• Sue small competitors and/or acquire them• Smaller companies often cannot afford the legal costs of

litigation• A modern trend is to seek out-licensing to capitalize the patents• May try licensing competitors without patent portfolios or non-

competing companies• Can afford foreign filing of patents

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THANK YOUTHANK YOU EXPERT PANEL!

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