1. The 50 to 499 person high-tech company Jonah Probell Jonah@Probell.com Nothing presented here is legal advice.

2.  A government-enforced monopoly ◦ For a limited time ◦ In a particular region  On a technological improvement  To extract the economic value of a market segment 2

3.  Not playing the game is not an option  Under a first-to-file system, a company must act or be blocked by a later competitor  A company must understand both the rules and strategy 3

4.  Comprises: CTO, Legal, and Marketing  Meets quarterly  Reviews market developments and competition  Prioritizes invention disclosures for filing  Checks product release schedule against invention disclosures  Plans US and foreign patenting strategy  Reviews patent budget 4

5.  Maintains an accurate docket  Solicits invention disclosures ◦ Hangs around the water cooler  Conducts prior art searches  Conducts inventor interviews  Routinely writes and files the highest priority invention  Checks conference papers against invention disclosures 5

6. 1. Propose various claims of different breadths ◦ Describe conceivable products of competitors, prospective licensees, and potential acquirers 2. Search for prior art and eliminate non-novel claims ◦ All material prior art must be saved and filed 3. Analyze the market size that each novel claim can capture 6 Obvious does not carry its dictionary meaning in the context of patents. Obvious means that multiple prior art references must be reasonably combined to prove a claim not-novel.

7.  Each claim element limits the market scope ◦ Fewer potential products infringe  Less market value  Each claim element limits the prior art ◦ Fewer references for the combination  Greater (re)exam strength 7 Claim elements ValueStrength Value-strength inversion Both allowability and enforcement are per-claim, not per-application or patent.

8.  A motor vehicle (large market, much prior art)  A motor vehicle having: ◦ Four wheels; (eliminates motorcycle and airplane market segments) ◦ Two seats; and (eliminates sedans and SUVs) ◦ A bed for carrying lumber. (eliminates sports cars)  A motor vehicle having: ◦ Four wheels; ◦ Two seats; ◦ A bed for carrying lumber; and ◦ 1001 colored lights. (no prior art, but no market) 8 The name of the game is the claim.

9.  Avoid searching patents, lest you learn that your product infringes  Thoroughly search non-patent prior art to save the examiner time ◦ Examiners only have a few hours for each application  Let the examiner find patent prior art  Add and amend claims  Finding prior art strengthens a patent ◦ Acquirers and investors study patent applications’ histories 9 The examiner is your friend.

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11.  Capture whiteboard drawings  Edit a doc together using a projector ◦ Keep the invention disclosure doc at hand 1.Have inventors dictate a picture claim 2.Break out dependent claims 3.Achieve the broadest reasonable claim 1 4.Define technical terminology 11 Avoid inventor “myopia”. Describe other companies’ conceivable products.

12.  No visible deadline for many filings  Product deadline pressure is ever-present ◦ There is never a good time to work on patents  Bonus programs are insufficient motivation  Assign inventors time to review draft applications 12

13.  No part of a well-executed strategy ◦ Used by pre-funding startups ◦ Used by unrepresented inventors ◦ Used for unplanned filings before public disclosures  Conferences  Delays the date of receiving an enforceable patent  Encourages careless drafting 13

14.  Foreign patents must be filed within one year of US filing  Consider where likely-infringers reside  Consider foreign market size ◦ But only what products might be made if the US market is closed  Use PCT procedure to buy an extra 18 months if needed 14

15. 15 These are gross approximations ActivityApproximate attorney fees Approximate Office fees US non-provisional (regular) patent application $10,000$1500 Strong US non-provisional patent application $20,000$1500 Provisional patent application $500$130 Strong provisional patent application $8000$130 Provisional conversion$6000$500 Translation (per language)$5000 PCT procedure$500$2000 Per-foreign office filing$3000$1500 Enforcement litigation$2,000,000

16.  Patenting is mandatory  Draw a team with expertise in technology, legal, and marketing  Be quantitative in choosing inventions to patent  Search non-patent prior art  Draft claims meticulously  Consider international strategy and budget 16