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Cochran Law Offices, LLC Patent Procedures Presented by William W. Cochran
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Cochran Law Offices, LLC A. Purpose & Objectives 1. Develop and maintain strong portfolio of patents Negotiate defensively if patent of another is Unknowingly used License technology to obtain revenue Exclude competitors from business 2. Provide systematic way to handle inventions Encourage disclosure of inventions Provide recognition to inventors
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Cochran Law Offices, LLC A. Purpose & Objectives (cont.) 3. Provide guidelines for avoiding infringement of others patents
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Cochran Law Offices, LLC B. Intellectual Property Committee 1.Term of Employees 2.Review Invention Disclosures 3. Recommend Course of Action a) File US Patent Application b) Foreign Filing c) Select Countries, PCT, EPO, National d) File Provisional Application
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Cochran Law Offices, LLC B. Intellectual Property Committee 3. Recommend Course of Action (cont.) e) Perform Search f) Maintain as a Trade Secret g) Publish invention as a Defensive Publication h) File Design Application, Utility Model
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Cochran Law Offices, LLC B. Intellectual Property Committee 4. Make Strategic Decisions on IP a. Overall polices and objectives Defensive of offensive postures Amount of investment in IP Short term & long term goals re IP
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Cochran Law Offices, LLC B. Intellectual Property Committee 4. Make Strategic Decisions on IP (cont.) b. Examples Incentive programs Licensing objectives – pursuing royalty revenue Strategies to defend against charges of infringement Criteria for selecting invention for filing with emphasis on defensive or offensive strategies Establish policies for handling offers of license
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Cochran Law Offices, LLC B. Intellectual Property Committee 5. Information Needed by IP Committee a. Marketing Information Sales by country Sales by product b. Competitor Information Location of manufacturing plants Sales volumes by product/country
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Cochran Law Offices, LLC B. Intellectual Property Committee 5. Information Needed by IP Committee (cont.) c. Manufacturing Current & planned sites of ABC, Inc. d. Significant patents in areas of business of ABC, Inc. e. Expertise in areas of technology of ABC, Inc.
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Cochran Law Offices, LLC B. Intellectual Property Committee 6. Members of Committee a. IP Counsel b. Senior Technical person knowledgeable in technical trends of ABC, Inc. and competitors c. Senior marketing person d. Decision maker of spending issues e. In house counsel, if available 7. Meetings a. Quarterly b. Use selection Criteria
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Cochran Law Offices, LLC C. Patent Coordination 1. Single Person – primary contact 2. Oversees function of committee 3. Primary contact for outside counsel 4. Sets up IP meetings 5. Final Decision maker on IP issues
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Cochran Law Offices, LLC D. Invention Disclosure Forms 1. Complete – 15 minutes to ½ hour 2. Send to Patent Coordinator 3. Reference code listings, Inventors notebooks, other documentation & attach copies 4. Make Invention Disclosure From available on company intranet 5. Have witnessed 6. List prior art known by inventor, public uses, sales, etc. 7. List NDA’s that relate to invention 8. Include a drawings or flow chart 9. IP Coordinator should scan the form when received to determine if any pending statutory bars exist
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Cochran Law Offices, LLC E. IP Committee Meeting 1. Item for review a. Newly issued patents (notices of allowance – filing of continuations) b. New invention disclosures c. Payment of maintenance fees d. Foreign filing decisions e. Copyright issues f. Trademark issues g. Other IP issues 2. Timing – As needed
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Cochran Law Offices, LLC E. IP Committee Meeting 3. Review of newly issued patents (cont.) a. Review coverage b. Set up database of issued patents rate patent classify as to area of technology list products covered by patent provide summary of coverage c. Make decision re filing of continuation or CP when notice of allowance received 4. Product Marking Decisions
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Cochran Law Offices, LLC F. Review Invention Disclosure Forms 1. Search and file – if prior art not found 2. File a. Provisional if statutory bar pending b. Confidant of knowledge of prior art 3. Keep as a Trade Secret detection of infringement difficult or impossible
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Cochran Law Offices, LLC F. Review Invention Disclosure Forms (cont.) 4. Deferral incomplete information information needs to be obtained from inventor, marketing, etc. 5. Inactive No further action Memo to inventor Provide rating sheet to inventor Invite inventor to provide feedback
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Cochran Law Offices, LLC F. Review Invention Disclosure Forms (cont.) 6. Foreign Filing review foreign filing evaluation sheet submitted by inventor make decision with input from marketing 7. Assign to IP attorney for filing
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Cochran Law Offices, LLC G. Other Party’s Patents 1. Established Policy is to not knowingly infringe the valid and enforceable patents of other parties 2. Other’s patents should not be used or referred to when designing ABC Inc.’s products a. Unless patent is licensed by ABC b. Existence of license is confirmed 3. Employees should not make comments or make conclusions re other’s patents, since patents are complex legal documents
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Cochran Law Offices, LLC H. Offer of License or Charge of Infringement 1. If employee receives letter offering license or changing infringement, refer to Patent Coordinator 2. If employees know of patent infringement, contact Patent Coordinator
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