1. Patent Landscaping Patrick J. Kelly, Ph.D., J.D. Ballard Spahr LLP 215.864.8841 kellypj@ballardspahr.com The content of this presentation should not be construed as legal advice, and readers should not act upon the information presented without professional counsel.

2. 2 Patent Landscaping Topics What is patent landscaping? Managing Risk – identification of competitors, their patents and the scope of claim coverage Presenting the results of the patent landscape analysis Strategy and plan going forward Opportunity – identification of potential partners Continuous monitoring

3. 3 What Is Patent Landscaping? Identify patents and applications relating to a specific concept/product Identify competitors and scope of patent coverage Identify potential partners

4. 4 A “Case” Study Cell phone case with detachable solar charger Solar Panel Case

5. 5 A “Case Study” Solar panel is detachable As improved panels are developed they can be used with case Separate case allows you to use with a variety of different phone types can modify the case if a phone changes in size/shape

6. 6 Gather the Facts about the Product What is the product? How do you make it from start to finish? -Manufacturing Process Parts Assembly -Final Product -Methods of Use -What are the goals of your business? Do you have patents/applications? What aspect of the product do your patents/applications cover? -Where will you make it? -Where will you sell it?

7. 7 Think About How to Search the Patent Databases Search words -Mobile phone case -Cell phone case Solar powered -Attachment of solar panel Search terms may evolve -Patent classification groups Patent office has broken technology down into subgroups Locate patent in this technical area and look at the groups

8. 8 Classifications CLASS 320ELECTRICITY: BATTERY OR CAPACITOR CHARGING OR DISCHARGING 100PRIMARY CELL DEPOLARIZATION 101WIND, SOLAR, THERMAL, OR FUEL-CELL SOURCE 102. With shuntless charging source control 103ONE CELL OR BATTERY CHARGES ANOTHER 104. Vehicle battery charging 105.. Employing “jumper” cable 106MEANS TO IDENTIFY CELL OR BATTERY TYPE 107CELL OR BATTERY CHARGER STRUCTURE 108. Charger inductively coupled to cell or battery 109. Charger station for electrically powered vehicle 110. For diverse sizes of cells, batteries, or battery packs 111. Having plug for A-C receptacle 112. For battery pack 113.. With charger stand or base adapted to hold battery pack 114. For handheld device 115.. With charger stand or base

9. 9 Search - Who Will Do the Search? The importance of technical competence You Patent counsel -Professional searcher

10. 10 Search – Scope of the Search Search -May consider patentability of your applications -Validity of your patents What is in the literature – will help determine patentability/validity What do others have

11. 11 Search – Scope of the Search Patents -US -International Applications -US -International

12. 12 Managing Risk Avoid infringement Avoid need for a large number of licenses Discover if field is full of competitors globally/locally

13. 13 Managing Risk 1.Identify which companies own relevant patents 2.Identify who owns the most patents 3.Identify who owns the most important patents 4.Identify collaborations between companies 5.Identify prolific inventors 6.Identify important inventors 7.Which academic institutions have the most inventors working in the technology 8.Which geographical areas are the most prolific - US by state, World by country

14. 14 Presenting the Results of Patent Landscape Analysis Product Description at time search was done and identify subsequent modifications that might require additional search Search Terms Search Results -Patents By relevance – Red, Yellow, Green By Assignee By Inventor

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19. 19 Initial Review of Search Patents -US Claims that have issued Patent term remaining for patents identified -Normal term -Extended term FDA Patent Office delays -Shortened term Terminal disclaimer -International General Timelines – your product launch versus patent expirations

20. 20 Initial Review of Search Applications -US Pending Claims – PAIR system - current status of the claims -International Pending Claims – likelihood of issue

21. 21 Initial Review of Search GREEN Can distinguish over the claims Not considered to be a problem

22. 22 Initial Review of Search YELLOW May be a problem Look at the prosecution history of the patent or the application

23. 23 Initial Review of Search RED Review prosecution history to see if claims can be interpreted in a way that helps you Is it paid up and in force Is it valid?

24. 24 Strategy and Plan Going Forward No issues -Ongoing monitoring system -Delay in publishing of applications Issues -Patent license Royalties or lump sum -Patent litigation Very Expensive -Modify product – Find a way to design around competitor’s product

25. 25 Opportunity – Identification of Potential Partners Based on patents that may require a license, is there a way to partner? -Solar panel maker looking for markets -Plastic manufacturer looking to sell materials for cases

26. 26 Options Purchase the patent – patent is assigned to you License Cross-license -Patent pools Design around

27. 27 Continuous Monitoring As product develops may need to do new searches If product changes-search terms should also evolve Set up a system of continuous monitoring. -Regular search updates -Alerts

28. 28 THANK YOU Patrick J. Kelly, Ph.D., J.D.