Think IP Strategy Trusted advisors to the world’s most innovative companies Brisbane Beijing Chicago Goteborg Hyderabad Johannesburg Melbourne Mumbai Washington D.C. Freedom to Operate Opinion Vandana Mamidanna

Think IP Strategy Trusted advisors to the world’s most innovative companies Brisbane Beijing Chicago Goteborg Hyderabad Johannesburg Melbourne Mumbai Washington D.C. Overview Right to use Country-wise analysis Not a static single point activity –Changes in IP Landscape –Changes in Product

Think IP Strategy Trusted advisors to the world’s most innovative companies Brisbane Beijing Chicago Goteborg Hyderabad Johannesburg Melbourne Mumbai Washington D.C. Pre- FTO –Identify Current Product Characteristics –Identify Any Proposed/Projected Changes To Be Made To The Product –Is The Product Only For The Local Market Or International –Determine Level Of Interest In Product And Next Key Decision Points –Before Further Significant Investment (Time/Cost), Initiate Patent FTO Search And Analysis

Think IP Strategy Trusted advisors to the world’s most innovative companies Brisbane Beijing Chicago Goteborg Hyderabad Johannesburg Melbourne Mumbai Washington D.C. Initial Search –Develop expertise/ Use an Expert –Extent of search Age of the product Target Market/Markets Consider Local searches Refine the search

Think IP Strategy Trusted advisors to the world’s most innovative companies Brisbane Beijing Chicago Goteborg Hyderabad Johannesburg Melbourne Mumbai Washington D.C. Analysis of Search Results –Identify Patent Series Of Possible Concern –Review Status (Pending, Granted, Abandoned, Next Action Due) –Check Original And Latest Claims Where Identified Patent Applications Are Pending For Relevance. Check Claims Of Granted Patents For Relevance –Discuss Patent Claims Of Concern With Scientists To Determine If Concerns Are Resolvable By Workaround Activities

Think IP Strategy Trusted advisors to the world’s most innovative companies Brisbane Beijing Chicago Goteborg Hyderabad Johannesburg Melbourne Mumbai Washington D.C. Analysis of Search Results –If Decision Is To Monitor Pending Claims Of Concern, Introduce A Regular Review Process With Appropriate Reminders –Consider Possible Invalidity Grounds For Problem Patents – Review Cited Art, Conduct Invalidity Search And Analysis –Retain Outside Counsel, If Appropriate, And Develop Invalidity Attacks – Manage FTO issues

Think IP Strategy Trusted advisors to the world’s most innovative companies Brisbane Beijing Chicago Goteborg Hyderabad Johannesburg Melbourne Mumbai Washington D.C. Freedom to Operate – Process Flow High Value Database(s) # Records Abstracts Countries Remove duplicates Keywords Substructure Generic scope Input Search Analysis 1 < Records Abstracts Countries of interest Analysis 2 << Records Claims Countries of interest Issued? Assess: Claims (esp issued) Countries Infringement Assessment Assess: Claims (esp issued) Countries Invalidity/ Workaround √ OK TRACK LITIGATE STOP LICENSE Advice [Repeat over time]

Think IP Strategy Trusted advisors to the world’s most innovative companies Brisbane Beijing Chicago Goteborg Hyderabad Johannesburg Melbourne Mumbai Washington D.C. Mitigate FTO Issues Utilise in-house and partners’ knowledge of area Conduct formal FTO reviews (stage-gate) Update periodically – new published applications daily Patent your inventions (and/or defensive publication) –Don’t rely on prior user defence to infringement

Think IP Strategy Trusted advisors to the world’s most innovative companies Brisbane Beijing Chicago Goteborg Hyderabad Johannesburg Melbourne Mumbai Washington D.C. Mitigate FTO Issues Track relevant pending applications –Intervene as necessary (e.g. 3 rd party observations) –Publish to “throw off the scent” DON’T ignore relevant valid patents –Injunctions, enhanced damages, “Bolar” limitations, dealbreaker

Think IP Strategy Trusted advisors to the world’s most innovative companies Brisbane Beijing Chicago Goteborg Hyderabad Johannesburg Melbourne Mumbai Washington D.C. Managing FTO Issues Consider workarounds –Re-formulation –Off-shoring Develop bargaining chips –Patent in 3 rd party space –Solidify your own IP position

Think IP Strategy Trusted advisors to the world’s most innovative companies Brisbane Beijing Chicago Goteborg Hyderabad Johannesburg Melbourne Mumbai Washington D.C. Managing FTO Issues License – earlier the better Look for a win-win Litigate – courts, patent offices (oppose/re- examine), ITC, standing issues Stop

Think IP Strategy Trusted advisors to the world’s most innovative companies Brisbane Beijing Chicago Goteborg Hyderabad Johannesburg Melbourne Mumbai Washington D.C. Thank You