Crafting Your IP Strategy Stephanie L. Chandler, Esq. October 12, 2007 Jackson Walker L.L.P. www.jw.com Center for Innovation and Technology Entrepreneurship.

Slides:



Advertisements
Similar presentations
Intellectual Property Protection – Critical Issues to Consider in Business Ventures John F. Letchford, Esquire Archer & Greiner, P.C.
Advertisements

Managing Intellectual Property Assets in International Business Anil Sinha, Counsellor, SMEs Division World Intellectual Property Organization (WIPO)
Licensing, Alliances, and Partnerships Stephanie L. Chandler Jackson Walker L.L.P. August 3, 2005.
Stephanie L. Chandler Jackson Walker L.L.P. Bexar County Women’s Bar Association March 15, 2002 Austin  Dallas  Fort Worth  Houston Richardson  San.
INTELLECTUAL PROPERTY
INTRODUCTION TO PATENT RIGHTS The Business of Intellectual Property
Peter D. Aufrichtig, Esq..  Intellectual Property clients look and sound like all other clients.
UTSA Colleges of Business and Engineering October 5, 2013 TAKE YOUR TECHNOLOGY TO THE LIMIT! 2014 Technology Entrepreneurship Boot Camp – Intellectual.
Intellectual Property and Technology Transfer Ron Huss, Ph.D., Associate Vice President of Research and Technology Transfer Michael Brignati, Ph.D., J.D.,
Copyright P.B.Bottino All rights reserved Paul Bottino, Executive Director (617) Mini-MBA in Entrepreneurship.
D ANIELS B AKER Introduction to Patent Law Doug Yerkeson University of Cincinnati Senior Design Class April 6, 2005.
1 Intellectual Property Basics Peggy Wade, Ph.D. Director, Division of Engineering Research, College of Engineering Michigan State University
Chapter 7.5 Intellectual Property Content, Law and Practice.
® ® From Invention to Start-Up Seminar Series University of Washington The Legal Side of Things Invention Protection Gary S. Kindness Christensen O’Connor.
Intellectual Property OBE 118 Fall 2004 Professor McKinsey Some property, very valuable property, exists only in our minds, in our imagination. It is intangible.
Intellectual Property and Commercializing Technology Identifying, Protecting, Growing and Commercializing Intellectual Property in both Academic and Commercial.
IP=Increased Profits How to Make Your IP Work For You Rachel Lerner COSE Fall 2006.
© 2010 Hodgson Russ LLP IEEE Southern Area Entrepreneur’s Day Overview Of The Patent Process R. Kent Roberts Hodgson Russ LLP (716)
Intellectual Property
Management of Intellectual Property at Iowa State University Contributing to Economic Development Kenneth Kirkland, Ph.D. Executive Director, Iowa State.
Patent and Intellectual Property
Intro to Intellectual Property 05/13/2015. Exponential Inventor Intro to Intellectual Property 05/13/2015 Why is IP Important? Everyone makes a big deal.
MSE602 ENGINEERING INNOVATION MANAGEMENT
I DENTIFYING AND P ROTECTING I NTELLECTUAL P ROPERTY Tyson Benson
Overview of IP Protection Mechanisms in the United States Presented by: Daniel Waymel UT Dallas – August 2013.
Overview OTL Mission Inventor Responsibility Stanford Royalty Sharing Disclosure Form Patent View Inventor Agreements Patent.
Intellectual Property. John Ayers February 25, 2005.
What is Intellectual Property ? Patents- protection of technology Trademarks- protection of domain names and product identity Copyrights- protection of.
Intellectual Property Leza Besemann, Technology Strategy Manager November 25, 2014 ME 4054W.
2011 Industry Sponsored Research Workshop INTELLECTUAL PROPERTY Michael Jaremchuk Associate Director CVIP Phone: FAX:
Introduction to IP Ellen Monson Director Intellectual Property Office University of Cincinnati.
5020 Montrose Blvd., Suite 750 Houston, TX (fax) (mobile) WHAT IN-HOUSE COUNSEL NEEDS TO KNOW ABOUT IP August.
Technology-Business-Legal Some Critical Intersections Getting Started Legally IP Protection Licensing Mark J. Sever, Jr., Esquire Deborah A. Hays, Esquire.
Preparing a Provisional Patent Application Hay Yeung Cheung, Ph.D. Myers Wolin, LLC March 16, 2013 Trenton Computer Festival 1.
Intellectual Property and Entrepreneurship Presented at IEEE/ComSoc, Boston Section June 2, 2011 George Jakobsche For additional information, see accompanying.
Intellectual Property PatentCopyright Trade Marks Trade Secrets.
Zheng Liu January 18, 2015 Intellectual Property Law For Startups.
Class Seven: Intellectual Property Patents, Trademarks and Copyrights.
Intellectual Property Laws and Fair Use Guidelines for Educational Multimedia.
An Intellectual Property Primer
UNECE April 2009 Commercialization of IPR A Business Perspective Jason Bucha, Compliance Counsel April 2, 2009.
Welcome and Thank You © Gordon & Rees LLP Constitutional Foundation Article 1; Section 8 Congress shall have the Power to... Promote the Progress.
Ignite Technology Transfer Office INTELLECTUAL PROPERTY RIGHTS Lily O’Brien IP & Commercialization Contracts Manager Ignite Technology Transfer Office.
Fundamentals of Intellectual Property
UTSA DRA Introduction to Intellectual Property
An Overview of Intellectual Property by John Slaughter September 26, 2009 © John Slaughter All Rights Reserved.
Chapter 18 The Legal Aspects of Sport Marketing. Objectives To introduce the key legal concepts and issues that affect the marketing of the sport product.
Slide Set Eleven: Intellectual Property Patents, Trademarks and Copyrights 1.
Intellectual Property. An original (creative) work, invention or information protected by law through a trademark, patent, copyright or trade secret.
Intellectual property (IP) - What is it?. Intellectual property (IP) Refers to creations of the mind, such as inventions; literary and artistic works;
Intellectual Property. An original (creative) work, invention or information protected by law through a trademark, patent, copyright or trade secret.
Intellectual Property Basics for Business Owners David M. Knasel, Esq. Dominion Business Law PLC Tysons Corner | Leesburg, VA
Technology Transfer Office
Intro to Intellectual Property 3.0
Intellectual Property
INTELECTUAL PROPERTY RIGHTS
Intellectual Property Patents, Trademarks and Copyrights
What are the types of intellectual property ?
What are the types of intellectual property?
What You Didn’t Know That You Didn’t Know About Patents
Licensing, Alliances, and Partnerships
Trademark, Patent, or Copyright?
Intellectual Property Considerations in Forming and Scaling a Business
Jonathan D’Silva MMI Intellectual Property 900 State Street, Suite 301
Presentation transcript:

Crafting Your IP Strategy Stephanie L. Chandler, Esq. October 12, 2007 Jackson Walker L.L.P. Center for Innovation and Technology Entrepreneurship Technology Entrepreneurship from Innovation to Business Venture

Stephanie L. Chandler Business Transactions and Intellectual Property Specialty Area: Technology Transfer and Commercialization University of Nebraska B.S.B.A. in Finance University of Virginia Juris Doctorate Community Involvement: San Antonio Technology Accelerator Initiative Entrepreneurship Alliance Committee Member, UTSA – Engineering College Advisory Council, Texas Emerging Technology Fund RCIC Selection Committee

Types of Intellectual Property Patents -- gives the inventor the right to exclude others from making the invention Trade Secrets/Know How -- protection by virtue of secrecy Trademarks/Service Marks -- identifies a unique source of goods or services Copyrights -- protects from copying of original works (music, books, software code)

Business name……………trade name Product marks and logos...trademark Software, texts, music…….copyright art, creative works Inventions…………………..patent Examples

ABC Inc. Employee, Customer and Supplier Goodwill Common Law Trademark and Trade Secret protection Building, Equipment, Inventory Registered - Trademarks, Trade Dress, Copyrights Patents – Utility Design, Business Method IP assignments and noncompetes - employees and contractors Formal Trade Secret Protection Form contracts - suppliers and customers ASSETS Soft Assets Hard Assets Extra Assets

PATENTS

Patents Definition: A patent is a grant from the U.S. government allowing its owner to exclude others from making, using, offering to sell, selling, or importing into the U.S. his invention There are three types of patents: –Utility patents, which protect new and useful inventions and processes –Design patents, which protect new and ornamental designs for articles –Plant patents, which protect new and distinct plant varieties that are asexually reproduced Utility patents are the most common: approx. 90% in 1999

Any new and useful –Process –Machine –Method of manufacture –Composition of matter –Improvements on existing things –Software –Methods of doing business What’s Patentable?

Patents What is protectable? –Can’t patent laws of nature, mental processes, mathematical algorithms per se or abstract ideas –Utility patents are available for the invention or discovery of any new, useful and non-obvious process, machine or invention Novelty means that the invention is new – even a minor difference conveys novelty. A single prior art patent that claims the same invention is enough to defeat novelty. Only “useful” inventions are patentable. Must have some utility or achieve some objective. Inoperative inventions do not have utility. Non-obviousness means that the differences between what is “out there” and your invention are not trivial to one skilled in the art. Somewhat subjective determination of the PTO examiner.

17 years from issue date17 years from issue date (pre-June 8, 1995) 20 years from earliest U.S. filing date (post-June 8, 1995)20 years from earliest U.S. filing date (post-June 8, 1995) Outside of U.S. – typically 20 years from filing dateOutside of U.S. – typically 20 years from filing date Term ** Maintenance Fees must be paid to keep in force.

Patents Bar Dates: –For U.S. patent: application will be barred if not filed within one year of the first: Public use Public disclosure (e.g., printed publication) Sale/Offer for sale –For International patent: application will be barred if not filed before any public disclosure/public use of the invention anywhere. USPTO filing considered “filing” for this purpose –Best policy: File with the USPTO prior to any disclosure if possible to preserve foreign filing rights

Patents - Other Considerations Patents are issued on a country-by- country basis –A U.S. patent will not stop someone in Japan, etc. from exploiting the patent (you can stop imports of infringing goods, though) –No “international patent” –International process for obtaining national patents (Patent Cooperation Treaty, or PCT)

Patents - Other Considerations Provisional Patent Applications –Inexpensive way to get an invention on file with the USPTO; Filing fee ($160/$80) + legal fees is typically less than $2,500 –Must enable; no new matter in the later, regular application –Must file regular application within 12 months to maintain priority of filing date

Patents – Other Considerations Laboratory Notebooks – What are they? –Technical diary; –Ideas, completed work, and accomplishments; –Chronological order; –Helps avoid repeated mistakes; and –Helps to track successes and failures

Closest known prior art- Novel Features- Advantages over prior art- US Patent # 6,245,999; 6,458,123 Witness and Date Beverage Container Animal Stomach

What should be entered into notebook? Title (what is the invention called) Purpose (what the invention does) Description (functional and/or structural) Sketch (informal sketch) Ramifications Novel features Closest know prior art Advantages

A Patent May Have Huge or Little Commercial Value

My Invention A. Cup B. Handle C. Metal Disc D. Magnet

PATENTABILITY ANALYSIS Patentability Operation Invention ABCD Your Description Novelty subtraction Leaves Obviousness subtraction Leaves --A --AB ABC ABCD --ABC ABCD Combinations obvious “to a person having ordinary skill in the art” are not patentable (§ 103) Prior art combinations are not patentable (§ 102) Combinations novel to your invention Combination that might be patentable

INFRINGEMENT ANALYSIS Patent Claim Claim’s Elements Accused Devices Patent Infringement A A AB ABC Yes AB ABC A AB ABC A AB ABC No Yes No Yes Claim Value High value Moderate value Low value

ABC … XYZ Invention ABC … XY Prior Art ABC … XYZ Patentable Combination Everything new is patentable (almost) – if you add enough elements to the claim

SCOPE OF CLAIM 1 WITH ELEMENT A A High Value A Boundary Infringements

SCOPE OF CLAIM 2 WITH ELEMENTS A AND B Moderate Value Infringements A+B Boundary A B

SCOPE OF CLAIM 3 WITH ELEMENTS A, B AND C A+B+C Low Value Boundary A B C Infringements

SCOPE OF A CLAIM WITH ELEMENTS A, B, C... Z SCOPE OF A CLAIM WITH ELEMENTS A, B, C... Z. Z Easy to get / but tiny infringement value. No competitors’ accused devices or methods have all elements A,B,C... Z Boundary A+B+C+Z A B C.Z

PATENTABILITY VS. INFRINGEMENT 1.Everything new is patentable (almost) - if you add enough elements to the claim. 2. But the more elements needed to get a patent, the less its value (maybe zero) - because fewer accused devices and methods infringe.

TRADE SECRETS

Trade Secrets Definition: Trade secrets consist of any valuable information not generally known to others that gives its owner a economic or competitive advantage and for which reasonable steps are taken to maintain its secrecy

Patents vs. Trade Secrets Pros: –Patents protect against independent development and reverse engineering –Trade secret lost if not maintained secret Cons: –Patents have a more limited life (20 yrs vs. indefinite); Thereafter, anyone can use Coca-Cola formula has been a trade secret for over 100 years and counting –Patents are more expensive to obtain and maintain; Trade secrets cost nothing other than expense of keeping secret

YOUR TRADE SECRETS ARE ONLY PROTECTABLE IF THE JURY FINDS THAT: The items were relatively secret; and The defendant knew the items were secret.

TRADEMARKS

Trademarks Definition: a trademark is a word, name, symbol, device or combination thereof that identifies and distinguishes one’s goods and services from those of another –Technically, a trademark is used to identify a good or product and a servicemark is used to identify a service

PROTECTABILITY OF TRADEMARKS Generic – Unprotectable (soda for a beverage or TV for a television) Descriptive - May be protectable (Jury question: Does it primarily describe or identify?) (such as “Tax Preparation Software” for a software program that enables users to prepare tax returns) Suggestive – Protectable (such as Greyhound for bus services and Jaguar for automobiles, with both marks suggesting the speed of their products; 7-ELEVEN for convenience stores) Arbitratory or Fanciful - Very protectable (such as Kodak, Starbucks, Verizon, Exxon)

Trademarks How trademarks arise: –Trademarks arise through use of a mark –Simple use of a mark grants rights in the mark against later users in the location of use and a reasonable area of expansion Can prevent use of mark on similar products or for similar services –Federal registration, although not required, protects the mark nationwide against later confusingly similar uses –Common law also applies Can be lost if mark becomes generic: e.g., Kleenex, Xerox

COPYRIGHTS

Copyrights Definition: Copyright is a form of protection to a wide variety of works, including literary, musical, dramatic, graphic, sculptural and architectural works, motion pictures and sound recordings –Not just critically acclaimed works –Extends to advertising brochures and copy and computer programs

Copyrights How copyrights arise: –Copyright protection exists from the moment a work is created –No registration is required –Copyright lasts for the author’s life plus 70 years (or in the case of works created by employees for their employers, for 95 years from publication of the work or 120 years from creation, whichever is shorter)

Copyrights What is protectable: –Copyright protects works of original authorship –Includes books, magazines, promotional materials, music, posters, movies, slide presentations, dance routines and website content –Does not extend to ideas, procedures, processes, systems, concepts or mere slogans, titles or blank forms

COMMERCIALIZATION

Licensing Patents -- gives the inventor the right to exclude others from making the invention Trade Secrets/Know How - - protection by virtue of secrecy Trademarks/Service Marks -- identifies a unique source of goods or services Copyrights -- protects from copying of original works (music, books, software code) License Third Party$$$$ Idea *The terms of licensing and joint venture relationships can add or subtract value.

License vs. other Structures Be aware of other structures –Joint Ventures/Collaborations –Outright Assignments –R&D Partnerships –Manufacturing/Supply Arrangements –Equity Investments (often coupled with License Agreements)

Product Story Florida State University Cancer treatment drug Licensed to Bristol-Myers Squibb, which began production in 1992 BMS's leading anti- cancer drug, with 1998 worldwide sales in excess of $1 billion.

Bottom Line Impact Pioneering research in both biotechnology and imaging enabled the University of Rochester to double the amount of revenue its basic research earned this year. The advance, to $29.5 million for the fiscal year that ends June 30, 2001, is more than double the $13.5 million that companies paid last year and 10 times the $2.9 million in royalties from the previous year. - Strong Health, © 2001 Prior to 1980, fewer than 250 patents were issued to U.S. universities each year and discoveries were seldom commercialized for the public's benefit. In contrast, In FY 99, AUTM members reported that 3,914 new license agreements were signed. Between FY 1991 and FY 1999, annual invention disclosures increased 63% (to 12,324), new patents filed increased 77% ( to 5,545) and new licenses and options executed increased 129% (to 3,914). - Association of University Technology Managers (AUTM), © 2001

License Income (Average FY Source: Association of University Technology Managers ) $ $ New York University$80,908,972 $ $ Baylor College of Medicine$ 6,758,000 $ $ University of Texas - Austin $ 5,057,647 $ $ UTHSCSA $ 2,211,194 $ $ UTHSC-Houston $ 1,998,947 $ $ University of Houston $ 534,053 $ $ University of Tx Med Branch $ 222,994 $ $ Texas Tech $ 157,365 $ $ Rice University $ 122,000

Inventor is Key to Commercialization Inventor knows field Inventor knows potential licensees Inventor can continue to invent to fill product pipeline for new ventures Get to know the OTV Get to know the University policies – this can be very lucrative for a professor

University/small company files a patent application on an invention, however, they do not have the resources to: Manufacture, Distribute, Import, Market, and Sell the product based on the invention.

Field of Use vs. Territory Use Limitation –Allows multiple licensees to exploit different uses of the same technology –Should Smallco limit the Field of Use? Should Bigco demand unlimited rights (limited only to the scope of the Patents and Know How)? Geographical Limitation on the rights to exploit Patent Rights and Know How

Diligence Obligations Must Bigco commit to some level of diligence in commercializing the technology? –Termination rights –Minimum royalties –Exclusive vs. non-exclusive

Payment Terms Advance Fees/Upfront Fees Milestones Royalties

Advance Fees/Upfront Fees Lump sum payment for entering into the license agreement May be used to reimburse Smallco for past R & D costs and fund future R & D expenses Different factors impact determination of upfront fees (R&D costs, market potential, industry convention)

Milestones Future payments to Smallco upon meeting defined goals Incentive used to motivate parties to advance project E.g., First commercial sale of System

Royalties Percentage of Product Sales Based on “Net Sales”, but is only net of returns, mandatory reimbursements and rebates Cost of Goods Sold typically is not deducted when determining Net Sales Audit rights (Right to check licensee books and records to ensure proper payment)

TRADEMARKS–Federal registrations COPYRIGHTS–Copyright registrations PATENTS–Know how to create value – rely on the experts TRADE SECRETS–Create good facts LICENSES – Clarify expectations

v1

Stephanie L. Chandler Jackson Walker L.L.P. Crafting Your IP Strategy Questions? Jackson Walker L.L.P. Austin  Dallas  Fort Worth  Houston  Richardson  San Angelo  San Antonio Sign up for eAlerts at