This presentation covers cost-effective patent protection for inventions worldwide and protection tactics for unpatented trade secrets. It also gives a compelling argument for why companies should go against the status quo when filing for patents which can help save money and speed up the total patenting process.
2. About AppFolio SecureDocs
AppFolio SecureDocs is a virtual data room for sharing and
storing sensitive documents both internally and with
outside parties.
AppFolio, Inc. Company Basics:
• Founded by the team that created and launched GoToMyPC
and GoToMeeting
• Backed by leading technology companies and investors
• Web-based business software for financial and legal
professionals
3. About One3IP Management
• One3 IP Management is an intellectual property management company that acts as
your in-house IP counsel handling all of your company’s IP, licensing and other legal
needs.
• One3 IP views its clients as partners and does not nickel and dime them for every
task, but works with its clients in a cost effective manner that allows One3 IP to learn
and stay abreast of its clients current and future business needs and goals.
• One3 IP does not follow the status quo in building its clients value through the
obtainment of a broad patent portfolio and the protection of its clients trade
secrets, but has developed novel methods that are cost effective and result in an IP
portfolio that provides broad protection.
4. About Peter Weinstein, Ph.D., J.D.
• Nearly a decade as a scientist, including time at NIH, USAMRIID and as a Sr.
Scientist at ImmuCell
• Former Patent Examiner at the USPTO
• Nearly a decade in private practice as a patent and general civil litigator and
patent prosecutor
• Six years at Baxter Healthcare (Sr. Counsel, IP)
• Founder One3 IP Management
6. What is IP
• Intellectual Property is property that results from original
creative thought.
• Generally, there are two types of Intellectual Property
• Patents
• The exclusive right granted by a government to an inventor to
manufacture, use, or sell an invention for a certain number of years.
• Trade Secrets
• A secret process, technique, method, list, etc., used to advantage in
a trade, business, profession, etc.
9. Value Of A Patent
• A patent has multiple uses
• Protect your invention
• Keep competitors from making, using or selling your
invention
• Raise revenue through licenses
• Tender offers
10. Patents are the “Life Blood” of
an Organization
―Anyone, I would imagine, who has tried to create a biotech company knows
just how important patents are…you realize it the first time you meet
potential investors.” (Mads Øvlisen, Chariman of the Board of Directors, Novo Nordisk).
―When doing deals, sometimes we only show our stack [of patents], and
sometimes the other party wants to do a lot of due diligence on our individual
patents. But we never fail to give a presentation of about one hour on
them—patents play a huge role in securing investment.‖ – CEO of a technology
company
―The role patents play in obtaining funding and launching startups is nothing
less than instrumental. It is fair to say that patents are the cornerstones of
startups and they can make or break a young, fledgling company.‖
(BioSpectrum Asia Edition—August 2010)
―Intellectual property will always be at the forefront of biotechnology - some
argue that the scope of patent protection actually defines the industry.‖
(www.investopedia.com)
12. The Major Myths About Patents And
Patenting
In 2008, three prominent U.S. IP professors published a survey
containing information gathered from over 10,000 companies in the
software-internet, biotechnology, and medical device sectors. The
survey results showed that many myths have arisen to support a
company’s decision to not adequately protect their IP.
Percent of Responders
Financial Cost of Getting A Patent 57
Believed Technology Was Not… 38
Competitors Could Invent Around… 45
13. The Status Quo
• Your company, university, or research institution
has been told to follow the status quo methods to
obtain a patent:
– hire an outside patent attorney whose job is to prepare patent applications based
solely on the data provided by your scientists
– to prosecute the patent application to obtain claims covering the invention
described by the data
– to file paper after paper in response to rejections from the patent office
– while paying high fees and taking many years to get a patent
– In spite of this, most company’s fail to adequately protect their technology
The status quo is costly, time
consuming, inefficient and frequently results in
a low value return
14. Break Out Of The Mold
There is a Better Way
• Prepare patent applications that not only cover your invention, but every
conceivable and imaginable use of your invention and claim broadly.
• You can license those areas that your company is not interested
• Provides ability to ―horse-trade‖ with Examiner
• Prosecute your patent application in a more efficient and cost effective
manner that not only saves, time and money, but results in broader
patent coverage.
• Proactively Executed Prosecution (―PEP‖)
15. Break Out Of The Mold
There is a Better Way
• Broadly covers the use of your company’s technology in its
research and development space;
• As well as your competitors space; and,
• In areas your company, university or research institution are not
interested in pursuing, but where you can still make money.
• Take advantage of opportunities presented to make patent
prosecution more streamlined and efficient.
• Patent Prosecution Highway (―PPH‖)
16. Break Out Of the Mold
Your Technology
Your Field
The World
17. Break Out Of The Mold
Comprehensive Patent Application
• Prepare broadly
• Include lists
• Molecules (all
proteins, metals, drugs, composites, etc.), concentrations, time, uses
, components, etc.
• Use prophetic examples
• Can enter data in U.S. and EP after file in support of claims
• Prepare comprehensive set of claims
• EP file in Specification; U.S. file and cancel with Prelim. Amendment
19. How PEP Works
Step One
• Patent only Significant Technology
• Every invention does not need to be patented!
• File applications at earliest opportunity
• Aggressively pursue broad claims
• Your application should cover every possible use of your
technology, even those your company will not pursue
• Quickly start prosecution in U.S.
• Take advantage of face-to-face interviewing opportunities
as soon as possible
• Result: Obtain first patent quickly!
20. How PEP Works
Step Two
• Put the issued U.S. patent into the ―Patent Prosecution Highway‖
and expedite prosecution to move your patent quickly around the
world
• Perfect your ―Patent Estate Architecture‖ by obtaining additional
patents in the U.S. by adding claim elements that are common
components of your invention
– More patents, more protection—all you need is one claim in
one patent to survive a court challenge
21. How PEP Works
Step Two Continued
• Move key newly issued patents around the world through the PPH
• Keep key applications alive where possible
– You want the ability to capture your competitors during the life
of your patent application or expand the breadth of your
coverage
• To save money, file only in countries where value is added either
through market opportunities (licensing), patent enforcement or
tenders
24. Basics of Trade Secret
Protection
General Concept of T.S. Law
• Trade secrets comprise confidential information that has value to a
company
– Includes manufacturing methods, customer lists, formulations, etc.
• To protect a trade secret, you have to do more than just say the
information is confidential
– While there is no one standard to protect trade secrets, there are
general good practices that will allow your company, research institution
or university to protect its trade secrets
25. Basics of Trade Secret
Protection
General Concept of T.S. Law
• The key is to show that you have made a concerted effort to identify
and protect your trade secrets
– The implementation of a ―Know-How‖ database
• Secure location for documents
• Limited access
• Can retrieve many years later
• Can use with a partner
• Secure Docs online database
26. Contact Us
AppFolio SecureDocs
50 Castilian Drive
Goleta, CA 93117
Phone: (866) 700-7975
info@securedocs.com
sales@securedocs.com
www.securedocs.com
@SecureDocsVDR
One3IP Management
1560-1 Newbury Road, #327
Newbury Park, CA 91320
Phone: (800) 478-2152
info@one3ip.com
peter_weinstein@one3ip.com
www.one3ip.com
@one3ip