The Disclosure Interview Evaluating IP Options July 12, 2015 Curtis Droege – Manager of Underwriting

Outline  The Initial Application  Invention Disclosure  Documentation Details  Understanding the Inventive Space  Invention Definition

Initial Application Sample Invention Disclosure (1 of 2)  Background  How did the invention come about?  Summary of the Invention  What is believed to be unique?  Can you summarize the invention in one or two sentences?  Brief Description / Drawings  Context for the Invention  Known products, patents or publications  Preferred Product Design  Alternate Product Designs  Perceived Limits (not practical beyond x, will not work beyond y)

Initial Application Sample Invention Disclosure (2 of 2)  External Activities  Disclosure to others, what, when, and to whom  References  Reference to other filed applications?  Inventors may not be familiar with Cont., CIP, Div. language Note  If joint inventors external to Company, are contracts in place for addressing ownership, cost sharing, licensing? Issues can be sufficiently complex to negate the value of a patent filing.

Initial Application Inventor’s Notebook – Still a good idea … Why?  Derivation Proceedings (37 CFR Part 42)  Post-AIA Inter Partes proceeding where a party “derived” an idea from the actual inventor, and then was the first to file a patent application  Establish Inventorship  Public or “private” disclosure dates, and what exactly was disclosed Good Practice  Document (preferably) in a bound notebook (and preferably numbered),  Invention notes, references to corresponding computer files (CAD file)  Involved parties – who did what (conception, reduced to practice)  Signed and witnessed (preferred)  Q: In lieu of notebook, to self? Good question for attorneys …

Understanding the Inventive Space Inventor’s Perspective  “… cannot find a product like this …” or “solved a challenging problem”  Client Expectation: Filing a patent application will “protect” the product  Reality: Disclosure Interview may be the first experience in strategic thinking Introducing Patentability Requirements  Simple explanations – reserve comprehensive discussions for take-home reading  Regarding Non-obviousness  Inventors will over censor their inventions as “obvious”  Many are of experts – well beyond the standard of “ordinary”  Encourage inventors to disclose inventions even if they believe them to be obvious

Understanding the Inventive Space Need for Prior Art Search  To anticipate the breadth of allowable claims Breadth of allowable claim that is likely

Understanding the Inventive Space Need for Prior Art Search  To provide context for client-practitioner strategic discussions  Scope of likely coverage  Value v. cost, uncertainty, and timing Regarding Value  ANY simplistic assertion of general patent value will be wrong  Many strategic factors involved  3rd party valuation nearly impossible  Discrete valuation, apart from portfolio valuation, is questionable  If you need a number, see chart,  then make up a situational discount rate 85% paid 66% paid 50% paid

Invention Definition “My invention is …” only the beginning  Based on all preceding information, and  Based on potential strategic value (reference Gary’s upcoming presentation) What should the invention become?  Merely accepting a “my invention is” mentality is less likely to result in an invention having strong strategic value Invention Shaping  Moving beyond the “problem solved”, the “cool idea”, and merely asking the inventor to consider “alternate embodiments”  Requires the practitioner to understand the technology and the strategic possibilities

Invention Definition Invention Shaping  Example 1: 1) A fluid connection for an inkjet printer comprising: a) An ink cartridge containing a needle; and b) A printer containing a septum  Likely infringement:  OEMs – only. But one of many fluid connectors options. Value? LOW  Example 2: 1) An ink cartridge for an inkjet printer comprising: a) A needle having [dimensions], and b) A shroud configured to be concentric to the needle …  Likely infringement:  Aftermarket manufacturer. Value? VERY HIGH  The invention is shaped toward claims that protect the strategic interests of the company - the ink cartridge

Final Thought Curtis Droege Underwriting Manager  Practitioner is the inventor’s coach, mentor, and champion  Teach  Encourage  Inspire Thank You!