1. Managing your Intellectual Property Portfolio – Session 412
Panel:
William J. Calore, AxleTech, General Counsel
David Dutcher, Western Digital, Asst. GC (IP)
Jim Goepel, Clear Armor, CTO, VP & General Counsel
Jill M. Goldman, American Bankers Association, VP & Senior Counsel II
Renae Wainwright, Kilpatrick Townsend & Stockton LLP, Partner
October 15, 2017

2. “Everything that can be invented has been invented
“Everything that can be invented has been invented.” Attributed to Charles H. Duell, Commissioner of U.S. Patent Office in 1899.

3. …and the Survey says:

13. In-house Legal Department Structure
Pros and cons of employing in-house IP Counsel
How to best use in-house resources (value proposition)
When does it make sense to bring in-house IP resources? (small legal dept. vs. large legal department) or (small portfolio vs large portfolio)
What role? Drafting patents? Prosecuting patents and/or trademarks, software, domain names? Other?
What about IP paralegals? How to use? When? Role?

14. Working with Outside IP Counsel
Effectively utilizing outside counsel in building and managing IP portfolios
Pros and cons of using outside IP counsel
Role(s) that outside counsel can play
Value proposition for utilizing outside IP counsel
U.S. vs ROW
Patents
Trademarks
Copyrights
Software
Domain Names
Cease & Desist Letters
Declaratory Judgments
Litigation

15. Cost Considerations to Consider
Cradle to grave considerations
Initial preparation (e.g., invention disclosure, patent searching, drafting)
Filing (U.S. and ROW)
Maintenance fees
Defending Patents, Trademarks and Copyrights
Cost effective foreign filing strategies and pitfalls to avoid
Internal costs – External costs
Core vs. Non-core Assets and how that influences decisions re:
Enforcement Actions; defending Assets (U.S. and ROW)

16. Making Sense Out of IP Assets
Patents – Trademarks – Service Marks – Software – Domain Names – Social Media – Copyrights

17. Strategies for Managing IP Portfolio
Small legal dept. vs. large legal department
Utility – Utility Model – Design – Trademarks – Copyrights
Use of Trade Secrets vs. Patents
- When
- Why
- Pros and cons
Software/Copyright/Domain Names
Core vs. Noncore IP Assets
Handling new inventions and deciding whether to seek IP protection, what type of protection, where to apply for protection, etc.

18. Strategies for Managing Patents, cont.
Monitoring a competitor’s patent filings: why monitor, what to monitor, how to monitor, and how to use the information offensively and defensively
Using software to manage IP Assets:
When
Pros and cons
Examples:
Foundation IP (patent database)
CPA Global (MFs and annuities management)
Innography (portfolio analysis)

19. Strategies for Managing IP Portfolio, cont.
Industry and market considerations
Examples: IT
Biotech
Manufacturing vs. Service Sector
Auto Industry (example of evolving market/industry considerations)
Government Contractor
Research Institute and Universities
Retail vs. Supplier
For Profit vs. Nonprofit

20. Strategies for Managing International IP Portfolios
Issues that arise with international filings
Issues that arise with protecting and defending international IP assets
Timing for filing Patents and/or Trademarks in foreign jurisdictions (before entering market, when entering market)?
Strategies for minimizing patent prosecution costs across a company’s patent portfolio (use of statistics, Track 1, Pre-interview requests, PPH, etc.)

21. Strategies for Managing International IP Portfolios, cont.
Where to file
Risks of not filing in BRIC countries (Russia, China, India, and/or Brazil)
How to use Design Patents in countries like India and China to protect IP assets
How to use Trademarks in countries like India and China to protect IP assets
How to use foreign agents to assist in prosecutions
Role of outside counsel in coordinating foreign agents

22. IP Review Committee Who should be on the Committee and why?
How often should the Committee meet?
What should the committee review and why?
The typical agenda covers these topics:
Review new Invention Disclosures
Review pending patent applications
Review pending trademark and copyright issues
Review maintenance fees (core and noncore IP Assets)
Review competitor activity (new patent filings, trademarks, trends, possible issues)
Enforce Actions; Infringement activity, including any cease and desist letters

23. Managing the Client and its Expectations
Who is your client (company’s interests vs. business contacts)?
What type of company (are we a technology company, for profit, nonprofit/trade association)?
How do you balance your customer’s/member’s expectations and protecting your client?
Startup vs. established company
Emerging markets
Emerging industries vs. established industries
Budgets/calculating payback of patents, trademarks, and copyrights
Personnel
Incentive Programs: Bonus/awards to inventors

25. Monetizing Assets Buying portfolios Selling portfolios
Quality vs. quantity
Core vs. noncore assets
Licensing issues
Royalties
- U.S.
- ROW

26. That’s all Folks!

27. Backup Slides
The trademarks and registered trademarks depicted in the foregoing slide are owned by their respective companies.
Panel Bios are on the next 2 pages.
USPT Office fees and estimated Foreign Patent filing and validation fees are included
Jack Daniels Cease & Desist Letter

28. Panel
Jill Goldman is Vice President, Senior Counsel II, Intellectual Property and Contracts at the American Bankers Association in Washington, DC. She is the recipient of the ABA 2012 WOW! Award, ABA Brand Honor Roll and multiple special recognition awards. Prior to joining ABA, Ms. Goldman was a trademark associate in NYC working for IP Boutique law firms with consumer packaged goods clients.
David Dutcher is Assistant General Counsel, Intellectual Property at Western Digital Corporation, where he leads the patent team. He also serves as an Adjunct Professor at the J. Reuben Clark Law School at Brigham Young University.
Renae Wainwright is a Partner with Kilpatrick Townsend & Stockton, and specializes in working with clients to develop and implement strategies for protecting, maintaining, licensing and enforcing patent rights around the world.

29. Panel cont.
Jim Goepel is ClearArmor’s CTO and General Counsel. Jim has a BSECE from Drexel University and JD and LLM degrees from George Mason University’s School of Law. Jim has held a number of tech positions before graduating from law school. In addition to private practice, Jim has worked for Unisys Corporation and Johns Hopkins University Applied Physics Laboratory. 
William J. Calore is General Counsel for AxleTech Group of Companies, a portfolio company of the Carlyle Group. He has extensive commercial, international, government contracts, and Intellectual Property experience, and has held senior positions with both international corporations and Government Contractors. He is a graduate of Washington & Lee Law School.

30. U.S. Trademark Fees – Per the USPTO:
Initial Application Fee for Electronic Filing
Option 1: $225 Option 2: $275 Option 3: $400
Note: Almost all trademark fees for any part of the process are calculated on a “per class basis” for all listed goods and/or services, which will make overall fees higher if goods/services fall in more than one class. Also, fees presented here are based on electronic filing (paper filings, although permitted, have much higher associated fees). Each of these 3 options have specific requirements that impact the fee amount. There are many factors for determining the filing fee for an initial application, and you should be familiar with these factors before accessing the new application forms.
Possible Additional Fees:
(1) Requesting extension of time to show use of mark (if not part of initial application): $125; and/or
(2) Showing use (if not part of initial application): $100.
After Mark Registers
(1) Filing Affidavit of Use after 5 Years (§8 affidavit): $125 per class; and
(2) Filing Affidavit of Use and Application for Renewal every 10 years (Combined §§8 and 9 affidavits): $425 per class.

31. Estimated Patent Foreign Filing Fees
Country
Filing, Examination, Prosecution and Granting Fees
Annuities/Maintenance Fees
Total
Australia
$ ,654
$ ,445
$ ,099
Brazil
$ ,097
$ ,987
$ ,084
Canada
$ ,918
$ ,217
$ ,135
China
$ ,644
$ ,506
$ ,150
Europe
$ ,160
$ ,812
$ ,972
India
$ ,268
$ ,275
$ ,543
Japan
$ ,153
$ ,451
$ ,604
Korea
$ ,337
$ ,382
$ ,719
U.S. Utility
$ ,194
$ ,200
$ ,394
U.S. Design
$ ,420 $
$ ,320
$ ,845
$ ,275
$ ,120
* Data obtained from Global IP Estimate. Estimates assume application includes 20 claims and are based on typical fee schedules supplied by foreign associates. The estimates provide for the basic processing of straight-forward applications and do NOT include charges for responses for office actions, arguments or other substantive work.

32. Estimated Validation Fees for EP Patent
Country
Validation Fees
Annuities
Total
Austria
$ ,452
$ ,990
$ ,442
Belgium
$ ,253
$ ,668
$ ,921
France $
$ ,251
$ ,218
Germany
$ ,105
$ ,030
$ ,135
Greece
$ ,800
$ ,901
$ ,701
Italy
$ ,875
$ ,522
$ ,397
Norway
$ ,106
$ ,579
$ ,685
Poland
$ ,973
$ ,625
$ ,598
Spain
$ ,104
$ ,704
$ ,808
Sweden
$ ,586
$ ,072
$ ,658
Switzerland
$ ,084
$ ,597
$ ,681
Turkey
$ ,900
$ ,675
$ ,575 UK
$ ,039
$ ,460
$ ,499
$ ,305
$ ,939
$ ,244
*Data obtained from Global IP Estimate. Estimates assume application includes 20 claims and that EP patent issued 4 years after filing at EPO.

33. Estimated Fees for Direct EP Patent Filings
Country
Filing, Examination, Prosecution and Granting Fees
Annuities/
Maintenance Fees
Total
Germany
$ ,648
$ 23,204
$ 34,852
France
$ ,171
$ 13,726
$ 23,897 UK
$ ,285
$ 11,383
$ 18,668
Italy
$ ,224
$ 14,132
$ 24,356
$ ,328
$ 62,445
$101,773
* Data obtained from Global IP Estimate. Estimates assume application includes 20 claims and are based on typical fee schedules supplied by foreign associates. The estimates provide for the basic processing of straight-forward applications and do NOT include charges for responses for office actions, arguments or other substantive work.