SlideShare una empresa de Scribd logo
1 de 27
Descargar para leer sin conexión
How To Protect Your
Company’s Intellectual
      Property
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
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.
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
Poll Question No. 1
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.
Patents
Poll Question No. 2
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
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)
Poll Question No. 3
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
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
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‖)
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‖)
Break Out Of the Mold

                  Your Technology



                      Your Field



                       The World
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
Proactively Executed Prosecution
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!
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
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
Trade Secrets
Poll Question No. 4
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
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
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
Thank You!



 Confidential ©2012 AppFolio, Inc.

Más contenido relacionado

La actualidad más candente

Getting The Patent
Getting The PatentGetting The Patent
Getting The PatentAlex Sousa
 
Protecting Your Intellectual Property: Cost-Saving Techniques, Legal Updates ...
Protecting Your Intellectual Property: Cost-Saving Techniques, Legal Updates ...Protecting Your Intellectual Property: Cost-Saving Techniques, Legal Updates ...
Protecting Your Intellectual Property: Cost-Saving Techniques, Legal Updates ...Knobbe Martens - Intellectual Property Law
 
The Current State of Trade Secret Law and How the New Federal Statute Will Sh...
The Current State of Trade Secret Law and How the New Federal Statute Will Sh...The Current State of Trade Secret Law and How the New Federal Statute Will Sh...
The Current State of Trade Secret Law and How the New Federal Statute Will Sh...Knobbe Martens - Intellectual Property Law
 
10 Strategies Startup Companies Need to Know to Aggressively Build a Patent P...
10 Strategies Startup Companies Need to Know to Aggressively Build a Patent P...10 Strategies Startup Companies Need to Know to Aggressively Build a Patent P...
10 Strategies Startup Companies Need to Know to Aggressively Build a Patent P...Knobbe Martens - Intellectual Property Law
 
411 on IP 101 for Tech-Geeks in the Startup World
411 on IP 101 for Tech-Geeks in the Startup World411 on IP 101 for Tech-Geeks in the Startup World
411 on IP 101 for Tech-Geeks in the Startup WorldG. Nagesh Rao
 
How To Secure Funding & Protect Intellectual Property For Life Sciences
How To Secure Funding & Protect Intellectual Property For Life SciencesHow To Secure Funding & Protect Intellectual Property For Life Sciences
How To Secure Funding & Protect Intellectual Property For Life SciencesSecureDocs
 
Developing an IP Strategy
Developing an IP StrategyDeveloping an IP Strategy
Developing an IP StrategyJane Lambert
 
Patents and IP for the startup founder (pasadena connect week) 2018.10.23
Patents and IP for the startup founder (pasadena connect week) 2018.10.23Patents and IP for the startup founder (pasadena connect week) 2018.10.23
Patents and IP for the startup founder (pasadena connect week) 2018.10.23L15A
 
Patent Database Mining and Patent Information Management
Patent Database Mining and Patent Information Management Patent Database Mining and Patent Information Management
Patent Database Mining and Patent Information Management spkowalski
 
Traklight Webinar with Shane Olafson and Kyle Siegal on Patent Dos and Don'ts...
Traklight Webinar with Shane Olafson and Kyle Siegal on Patent Dos and Don'ts...Traklight Webinar with Shane Olafson and Kyle Siegal on Patent Dos and Don'ts...
Traklight Webinar with Shane Olafson and Kyle Siegal on Patent Dos and Don'ts...Traklight.com
 

La actualidad más candente (20)

Getting The Patent
Getting The PatentGetting The Patent
Getting The Patent
 
Protecting Your Intellectual Property: Cost-Saving Techniques, Legal Updates ...
Protecting Your Intellectual Property: Cost-Saving Techniques, Legal Updates ...Protecting Your Intellectual Property: Cost-Saving Techniques, Legal Updates ...
Protecting Your Intellectual Property: Cost-Saving Techniques, Legal Updates ...
 
The Current State of Trade Secret Law and How the New Federal Statute Will Sh...
The Current State of Trade Secret Law and How the New Federal Statute Will Sh...The Current State of Trade Secret Law and How the New Federal Statute Will Sh...
The Current State of Trade Secret Law and How the New Federal Statute Will Sh...
 
What Intellectual Property Is, and Why It May Be Important To Your Startup
What Intellectual Property Is, and Why It May Be Important To Your StartupWhat Intellectual Property Is, and Why It May Be Important To Your Startup
What Intellectual Property Is, and Why It May Be Important To Your Startup
 
The Meaning of Patent Infringement and Patent Litigation
The Meaning of Patent Infringement and Patent LitigationThe Meaning of Patent Infringement and Patent Litigation
The Meaning of Patent Infringement and Patent Litigation
 
Intellectual Property for Engineers
Intellectual Property for EngineersIntellectual Property for Engineers
Intellectual Property for Engineers
 
10 Strategies Startup Companies Need to Know to Aggressively Build a Patent P...
10 Strategies Startup Companies Need to Know to Aggressively Build a Patent P...10 Strategies Startup Companies Need to Know to Aggressively Build a Patent P...
10 Strategies Startup Companies Need to Know to Aggressively Build a Patent P...
 
411 on IP 101 for Tech-Geeks in the Startup World
411 on IP 101 for Tech-Geeks in the Startup World411 on IP 101 for Tech-Geeks in the Startup World
411 on IP 101 for Tech-Geeks in the Startup World
 
What You Need to Know About Patent Filing and Litigation in Europe
What You Need to Know About Patent Filing and Litigation in EuropeWhat You Need to Know About Patent Filing and Litigation in Europe
What You Need to Know About Patent Filing and Litigation in Europe
 
How to Avoid Losing Patent Rights
How to Avoid Losing Patent RightsHow to Avoid Losing Patent Rights
How to Avoid Losing Patent Rights
 
How To Secure Funding & Protect Intellectual Property For Life Sciences
How To Secure Funding & Protect Intellectual Property For Life SciencesHow To Secure Funding & Protect Intellectual Property For Life Sciences
How To Secure Funding & Protect Intellectual Property For Life Sciences
 
Developing an IP Strategy
Developing an IP StrategyDeveloping an IP Strategy
Developing an IP Strategy
 
Preparing Your Medical Device NewCo For IP Due Diligence
Preparing Your Medical Device NewCo For IP Due DiligencePreparing Your Medical Device NewCo For IP Due Diligence
Preparing Your Medical Device NewCo For IP Due Diligence
 
Why is Intellectual Property Important?
Why is Intellectual Property Important?Why is Intellectual Property Important?
Why is Intellectual Property Important?
 
Patents and IP for the startup founder (pasadena connect week) 2018.10.23
Patents and IP for the startup founder (pasadena connect week) 2018.10.23Patents and IP for the startup founder (pasadena connect week) 2018.10.23
Patents and IP for the startup founder (pasadena connect week) 2018.10.23
 
Patent Database Mining and Patent Information Management
Patent Database Mining and Patent Information Management Patent Database Mining and Patent Information Management
Patent Database Mining and Patent Information Management
 
Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents
Procedures, Pitfalls and Costs: Best Practices for Securing  Foreign PatentsProcedures, Pitfalls and Costs: Best Practices for Securing  Foreign Patents
Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents
 
Traklight Webinar with Shane Olafson and Kyle Siegal on Patent Dos and Don'ts...
Traklight Webinar with Shane Olafson and Kyle Siegal on Patent Dos and Don'ts...Traklight Webinar with Shane Olafson and Kyle Siegal on Patent Dos and Don'ts...
Traklight Webinar with Shane Olafson and Kyle Siegal on Patent Dos and Don'ts...
 
Commercialization and Patent Infringement
Commercialization and Patent InfringementCommercialization and Patent Infringement
Commercialization and Patent Infringement
 
Information Technology/Biotechnology
Information Technology/BiotechnologyInformation Technology/Biotechnology
Information Technology/Biotechnology
 

Destacado

NP Company Presentation
NP Company PresentationNP Company Presentation
NP Company Presentationgrnstojanovic
 
Antropologiske perspektiver på effekt i stofmisbrugsbehandling
Antropologiske perspektiver på effekt i stofmisbrugsbehandlingAntropologiske perspektiver på effekt i stofmisbrugsbehandling
Antropologiske perspektiver på effekt i stofmisbrugsbehandlingSFI-slides
 
The role of robotic innovation in ore characterization, mineralogy and geomet...
The role of robotic innovation in ore characterization, mineralogy and geomet...The role of robotic innovation in ore characterization, mineralogy and geomet...
The role of robotic innovation in ore characterization, mineralogy and geomet...Mining On Top
 
Global Forum Business As Agent Of World Benefits
Global Forum Business As Agent Of World BenefitsGlobal Forum Business As Agent Of World Benefits
Global Forum Business As Agent Of World BenefitsNikolas Tsialdaridis
 
Responsible investment & governance annual report 2011
Responsible investment & governance annual report 2011Responsible investment & governance annual report 2011
Responsible investment & governance annual report 2011Nordea Bank
 
0007 br bdo_2011-08-31
0007 br bdo_2011-08-310007 br bdo_2011-08-31
0007 br bdo_2011-08-31dmidmsa
 
States of Fragility report
States of Fragility reportStates of Fragility report
States of Fragility reportAlison Burt
 
ABC Breakfast Club m. Abena: 40% færre restordre
ABC Breakfast Club m. Abena: 40% færre restordreABC Breakfast Club m. Abena: 40% færre restordre
ABC Breakfast Club m. Abena: 40% færre restordreABC Softwork
 
Solution57 company presentation
Solution57   company presentationSolution57   company presentation
Solution57 company presentationBrian Møller
 
Using the crowd to develop and assess business opportunities
Using the crowd to develop and assess business opportunitiesUsing the crowd to develop and assess business opportunities
Using the crowd to develop and assess business opportunitiesCBS Competitiveness Platform
 
60969_Orsted2003-Morten Høgholm Pedersen-New Digital Techniques in Medical Ul...
60969_Orsted2003-Morten Høgholm Pedersen-New Digital Techniques in Medical Ul...60969_Orsted2003-Morten Høgholm Pedersen-New Digital Techniques in Medical Ul...
60969_Orsted2003-Morten Høgholm Pedersen-New Digital Techniques in Medical Ul...Morten Høgholm Pedersen
 
qwest communications q_2Q 05er
qwest communications q_2Q 05erqwest communications q_2Q 05er
qwest communications q_2Q 05erfinance19
 
Cloud on PureSystems, Botond Kiss
Cloud on PureSystems, Botond KissCloud on PureSystems, Botond Kiss
Cloud on PureSystems, Botond KissIBMSERBIA
 
Baltic Institute of Corporate Governance
Baltic Institute of Corporate GovernanceBaltic Institute of Corporate Governance
Baltic Institute of Corporate Governancekkmbicg
 
Ecosystems presentation
Ecosystems presentationEcosystems presentation
Ecosystems presentationforagroup
 
Time Management Energistyrelsen
Time Management EnergistyrelsenTime Management Energistyrelsen
Time Management EnergistyrelsenRené Claus Larsen
 

Destacado (20)

NP Company Presentation
NP Company PresentationNP Company Presentation
NP Company Presentation
 
Antropologiske perspektiver på effekt i stofmisbrugsbehandling
Antropologiske perspektiver på effekt i stofmisbrugsbehandlingAntropologiske perspektiver på effekt i stofmisbrugsbehandling
Antropologiske perspektiver på effekt i stofmisbrugsbehandling
 
Lakhvir singh 30 oct
Lakhvir singh 30 octLakhvir singh 30 oct
Lakhvir singh 30 oct
 
The role of robotic innovation in ore characterization, mineralogy and geomet...
The role of robotic innovation in ore characterization, mineralogy and geomet...The role of robotic innovation in ore characterization, mineralogy and geomet...
The role of robotic innovation in ore characterization, mineralogy and geomet...
 
Global Forum Business As Agent Of World Benefits
Global Forum Business As Agent Of World BenefitsGlobal Forum Business As Agent Of World Benefits
Global Forum Business As Agent Of World Benefits
 
Responsible investment & governance annual report 2011
Responsible investment & governance annual report 2011Responsible investment & governance annual report 2011
Responsible investment & governance annual report 2011
 
Noise Networks in Europe - Colin Nugent [en]
Noise Networks in Europe - Colin Nugent [en]Noise Networks in Europe - Colin Nugent [en]
Noise Networks in Europe - Colin Nugent [en]
 
0007 br bdo_2011-08-31
0007 br bdo_2011-08-310007 br bdo_2011-08-31
0007 br bdo_2011-08-31
 
States of Fragility report
States of Fragility reportStates of Fragility report
States of Fragility report
 
ABC Breakfast Club m. Abena: 40% færre restordre
ABC Breakfast Club m. Abena: 40% færre restordreABC Breakfast Club m. Abena: 40% færre restordre
ABC Breakfast Club m. Abena: 40% færre restordre
 
Solution57 company presentation
Solution57   company presentationSolution57   company presentation
Solution57 company presentation
 
Using the crowd to develop and assess business opportunities
Using the crowd to develop and assess business opportunitiesUsing the crowd to develop and assess business opportunities
Using the crowd to develop and assess business opportunities
 
60969_Orsted2003-Morten Høgholm Pedersen-New Digital Techniques in Medical Ul...
60969_Orsted2003-Morten Høgholm Pedersen-New Digital Techniques in Medical Ul...60969_Orsted2003-Morten Høgholm Pedersen-New Digital Techniques in Medical Ul...
60969_Orsted2003-Morten Høgholm Pedersen-New Digital Techniques in Medical Ul...
 
qwest communications q_2Q 05er
qwest communications q_2Q 05erqwest communications q_2Q 05er
qwest communications q_2Q 05er
 
Saxo - Annual report 2010
Saxo - Annual report 2010Saxo - Annual report 2010
Saxo - Annual report 2010
 
Cloud on PureSystems, Botond Kiss
Cloud on PureSystems, Botond KissCloud on PureSystems, Botond Kiss
Cloud on PureSystems, Botond Kiss
 
Baltic Institute of Corporate Governance
Baltic Institute of Corporate GovernanceBaltic Institute of Corporate Governance
Baltic Institute of Corporate Governance
 
Ecosystems presentation
Ecosystems presentationEcosystems presentation
Ecosystems presentation
 
TEX07AR
TEX07ARTEX07AR
TEX07AR
 
Time Management Energistyrelsen
Time Management EnergistyrelsenTime Management Energistyrelsen
Time Management Energistyrelsen
 

Similar a How To Protect Your Company's Intellectual Property

OneStart 2015 London Bootcamp: Charlotte Teall, Forresters - Introducing IP
OneStart 2015 London Bootcamp: Charlotte Teall, Forresters - Introducing IPOneStart 2015 London Bootcamp: Charlotte Teall, Forresters - Introducing IP
OneStart 2015 London Bootcamp: Charlotte Teall, Forresters - Introducing IPOxbridge Biotech Roundtable
 
Intellectual Property Strategy
Intellectual Property StrategyIntellectual Property Strategy
Intellectual Property StrategyElijah Ezendu
 
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...MaRS Discovery District
 
Potential liability of lawyers performing/handling patent and trademark searc...
Potential liability of lawyers performing/handling patent and trademark searc...Potential liability of lawyers performing/handling patent and trademark searc...
Potential liability of lawyers performing/handling patent and trademark searc...Professor Jon Cavicchi, UNH School of Law
 
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...MaRS Discovery District
 
Entrepreneurship 101 - Intellectual Property
Entrepreneurship 101 - Intellectual PropertyEntrepreneurship 101 - Intellectual Property
Entrepreneurship 101 - Intellectual PropertyNORCAT
 
Top 5 patent Tips. Cerian Jones, UDL
Top 5 patent Tips. Cerian Jones, UDLTop 5 patent Tips. Cerian Jones, UDL
Top 5 patent Tips. Cerian Jones, UDLSarah Toomey
 
IP Funding Strategy, February 2014
IP Funding Strategy, February 2014IP Funding Strategy, February 2014
IP Funding Strategy, February 2014Forth
 
Intellectual Property Strategy - Drive Oregon Event - February 2014
Intellectual Property Strategy - Drive Oregon Event - February 2014Intellectual Property Strategy - Drive Oregon Event - February 2014
Intellectual Property Strategy - Drive Oregon Event - February 2014Forth
 
Patent Portfolio Development and Use
Patent Portfolio Development and UsePatent Portfolio Development and Use
Patent Portfolio Development and UseKristina Mcdonough
 
Running A TT Office – Best Practices
Running A TT Office – Best PracticesRunning A TT Office – Best Practices
Running A TT Office – Best PracticesMarcel Mongeon
 
[webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Pr...
[webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Pr...[webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Pr...
[webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Pr...OurCrowd
 
Common Pitfalls and Key Considerations in Getting (and Keeping) Intellectual ...
Common Pitfalls and Key Considerations in Getting (and Keeping) Intellectual ...Common Pitfalls and Key Considerations in Getting (and Keeping) Intellectual ...
Common Pitfalls and Key Considerations in Getting (and Keeping) Intellectual ...UCICove
 
Ip & npd razaghi-ramezankhani-ghiassaleh-parvizian
Ip & npd razaghi-ramezankhani-ghiassaleh-parvizianIp & npd razaghi-ramezankhani-ghiassaleh-parvizian
Ip & npd razaghi-ramezankhani-ghiassaleh-parvizianOmid Aminzadeh Gohari
 
IPR in Business #03: Developing Effective IP Strategy
IPR in Business #03: Developing Effective IP StrategyIPR in Business #03: Developing Effective IP Strategy
IPR in Business #03: Developing Effective IP StrategyOrigiin IP Solutions LLP
 
Freedom to Operate in the Pharmaceutical Sector
Freedom to Operate in the Pharmaceutical SectorFreedom to Operate in the Pharmaceutical Sector
Freedom to Operate in the Pharmaceutical SectorAdrian Bradley
 
Capturing & Protecting Your Company's Intellectual Property
Capturing & Protecting Your Company's Intellectual PropertyCapturing & Protecting Your Company's Intellectual Property
Capturing & Protecting Your Company's Intellectual PropertyParsons Behle & Latimer
 

Similar a How To Protect Your Company's Intellectual Property (20)

OneStart 2015 London Bootcamp: Charlotte Teall, Forresters - Introducing IP
OneStart 2015 London Bootcamp: Charlotte Teall, Forresters - Introducing IPOneStart 2015 London Bootcamp: Charlotte Teall, Forresters - Introducing IP
OneStart 2015 London Bootcamp: Charlotte Teall, Forresters - Introducing IP
 
Intellectual Property Strategy
Intellectual Property StrategyIntellectual Property Strategy
Intellectual Property Strategy
 
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...
 
Potential liability of lawyers performing/handling patent and trademark searc...
Potential liability of lawyers performing/handling patent and trademark searc...Potential liability of lawyers performing/handling patent and trademark searc...
Potential liability of lawyers performing/handling patent and trademark searc...
 
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...
 
Entrepreneurship 101 - Intellectual Property
Entrepreneurship 101 - Intellectual PropertyEntrepreneurship 101 - Intellectual Property
Entrepreneurship 101 - Intellectual Property
 
Commercial success through ip
Commercial success through ipCommercial success through ip
Commercial success through ip
 
Top 5 patent Tips. Cerian Jones, UDL
Top 5 patent Tips. Cerian Jones, UDLTop 5 patent Tips. Cerian Jones, UDL
Top 5 patent Tips. Cerian Jones, UDL
 
IP Funding Strategy, February 2014
IP Funding Strategy, February 2014IP Funding Strategy, February 2014
IP Funding Strategy, February 2014
 
Intellectual Property Strategy - Drive Oregon Event - February 2014
Intellectual Property Strategy - Drive Oregon Event - February 2014Intellectual Property Strategy - Drive Oregon Event - February 2014
Intellectual Property Strategy - Drive Oregon Event - February 2014
 
Patent Portfolio Development and Use
Patent Portfolio Development and UsePatent Portfolio Development and Use
Patent Portfolio Development and Use
 
Running A TT Office – Best Practices
Running A TT Office – Best PracticesRunning A TT Office – Best Practices
Running A TT Office – Best Practices
 
Ip 101 for Startups
Ip 101 for StartupsIp 101 for Startups
Ip 101 for Startups
 
[webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Pr...
[webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Pr...[webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Pr...
[webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Pr...
 
Common Pitfalls and Key Considerations in Getting (and Keeping) Intellectual ...
Common Pitfalls and Key Considerations in Getting (and Keeping) Intellectual ...Common Pitfalls and Key Considerations in Getting (and Keeping) Intellectual ...
Common Pitfalls and Key Considerations in Getting (and Keeping) Intellectual ...
 
IP 101 for Emerging Companies
IP 101 for Emerging Companies IP 101 for Emerging Companies
IP 101 for Emerging Companies
 
Ip & npd razaghi-ramezankhani-ghiassaleh-parvizian
Ip & npd razaghi-ramezankhani-ghiassaleh-parvizianIp & npd razaghi-ramezankhani-ghiassaleh-parvizian
Ip & npd razaghi-ramezankhani-ghiassaleh-parvizian
 
IPR in Business #03: Developing Effective IP Strategy
IPR in Business #03: Developing Effective IP StrategyIPR in Business #03: Developing Effective IP Strategy
IPR in Business #03: Developing Effective IP Strategy
 
Freedom to Operate in the Pharmaceutical Sector
Freedom to Operate in the Pharmaceutical SectorFreedom to Operate in the Pharmaceutical Sector
Freedom to Operate in the Pharmaceutical Sector
 
Capturing & Protecting Your Company's Intellectual Property
Capturing & Protecting Your Company's Intellectual PropertyCapturing & Protecting Your Company's Intellectual Property
Capturing & Protecting Your Company's Intellectual Property
 

Más de SecureDocs

Tech M&A Webinar: Unlocking Key Factors that Influence Valuation
Tech M&A Webinar: Unlocking Key Factors that Influence ValuationTech M&A Webinar: Unlocking Key Factors that Influence Valuation
Tech M&A Webinar: Unlocking Key Factors that Influence ValuationSecureDocs
 
Start with the Exit in Mind
Start with the Exit in MindStart with the Exit in Mind
Start with the Exit in MindSecureDocs
 
Trends in Tech M&A
Trends in Tech M&ATrends in Tech M&A
Trends in Tech M&ASecureDocs
 
Choosing an M&A Advisor: A Guide for Investors, Boards, and Management
Choosing an M&A Advisor: A Guide for Investors, Boards, and ManagementChoosing an M&A Advisor: A Guide for Investors, Boards, and Management
Choosing an M&A Advisor: A Guide for Investors, Boards, and ManagementSecureDocs
 
NDAs: A Logistical and Legal Nightmare!
NDAs: A Logistical and Legal Nightmare!NDAs: A Logistical and Legal Nightmare!
NDAs: A Logistical and Legal Nightmare!SecureDocs
 
Is Your Company's Buyer in Asia? Webinar Slides April 2016
Is Your Company's Buyer in Asia? Webinar Slides April 2016Is Your Company's Buyer in Asia? Webinar Slides April 2016
Is Your Company's Buyer in Asia? Webinar Slides April 2016SecureDocs
 
Raising Capital from Life Science Investors
Raising Capital from Life Science Investors Raising Capital from Life Science Investors
Raising Capital from Life Science Investors SecureDocs
 
Keys to Successful M&A: Transparency, Security, and Process
 Keys to Successful M&A: Transparency, Security, and Process Keys to Successful M&A: Transparency, Security, and Process
Keys to Successful M&A: Transparency, Security, and ProcessSecureDocs
 
Financial Basics for Startups: How to Think Like a CFO
Financial Basics for Startups: How to Think Like a CFOFinancial Basics for Startups: How to Think Like a CFO
Financial Basics for Startups: How to Think Like a CFOSecureDocs
 
Cybersecurity Brief: Understanding Risk, Legal Framework, & Insurance
Cybersecurity Brief: Understanding Risk, Legal Framework, & InsuranceCybersecurity Brief: Understanding Risk, Legal Framework, & Insurance
Cybersecurity Brief: Understanding Risk, Legal Framework, & InsuranceSecureDocs
 
When your Business can Benefit from a Corporate Lawyer- and Tips to Save Mone...
When your Business can Benefit from a Corporate Lawyer- and Tips to Save Mone...When your Business can Benefit from a Corporate Lawyer- and Tips to Save Mone...
When your Business can Benefit from a Corporate Lawyer- and Tips to Save Mone...SecureDocs
 
When Should an Early-Stage Company Hire a CFO?
When Should an Early-Stage Company Hire a CFO?When Should an Early-Stage Company Hire a CFO?
When Should an Early-Stage Company Hire a CFO?SecureDocs
 
Optimal File Sharing and Storage: Dropbox V. Virtual Data Rooms
Optimal File Sharing and Storage: Dropbox V. Virtual Data RoomsOptimal File Sharing and Storage: Dropbox V. Virtual Data Rooms
Optimal File Sharing and Storage: Dropbox V. Virtual Data RoomsSecureDocs
 
Funding for Life Sciences: SBIR and STTR Grant Basics
Funding for Life Sciences: SBIR and STTR Grant BasicsFunding for Life Sciences: SBIR and STTR Grant Basics
Funding for Life Sciences: SBIR and STTR Grant BasicsSecureDocs
 
Technology M&A: Deal Preparation and Management
Technology M&A: Deal Preparation and ManagementTechnology M&A: Deal Preparation and Management
Technology M&A: Deal Preparation and ManagementSecureDocs
 
The Art of the Deal- Webinar
The Art of the Deal- WebinarThe Art of the Deal- Webinar
The Art of the Deal- WebinarSecureDocs
 
Alternative Funding for Life Science Companies- Webinar Slides
Alternative Funding for Life Science Companies- Webinar SlidesAlternative Funding for Life Science Companies- Webinar Slides
Alternative Funding for Life Science Companies- Webinar SlidesSecureDocs
 
The Power Of The Paperless Office
The Power Of The Paperless OfficeThe Power Of The Paperless Office
The Power Of The Paperless OfficeSecureDocs
 
Cybersecurity: Malware & Protecting Your Business From Cyberthreats
Cybersecurity: Malware & Protecting Your Business From CyberthreatsCybersecurity: Malware & Protecting Your Business From Cyberthreats
Cybersecurity: Malware & Protecting Your Business From CyberthreatsSecureDocs
 
Keys to Successful M&A: Transparency, Security, and Process
Keys to Successful M&A: Transparency, Security, and ProcessKeys to Successful M&A: Transparency, Security, and Process
Keys to Successful M&A: Transparency, Security, and ProcessSecureDocs
 

Más de SecureDocs (20)

Tech M&A Webinar: Unlocking Key Factors that Influence Valuation
Tech M&A Webinar: Unlocking Key Factors that Influence ValuationTech M&A Webinar: Unlocking Key Factors that Influence Valuation
Tech M&A Webinar: Unlocking Key Factors that Influence Valuation
 
Start with the Exit in Mind
Start with the Exit in MindStart with the Exit in Mind
Start with the Exit in Mind
 
Trends in Tech M&A
Trends in Tech M&ATrends in Tech M&A
Trends in Tech M&A
 
Choosing an M&A Advisor: A Guide for Investors, Boards, and Management
Choosing an M&A Advisor: A Guide for Investors, Boards, and ManagementChoosing an M&A Advisor: A Guide for Investors, Boards, and Management
Choosing an M&A Advisor: A Guide for Investors, Boards, and Management
 
NDAs: A Logistical and Legal Nightmare!
NDAs: A Logistical and Legal Nightmare!NDAs: A Logistical and Legal Nightmare!
NDAs: A Logistical and Legal Nightmare!
 
Is Your Company's Buyer in Asia? Webinar Slides April 2016
Is Your Company's Buyer in Asia? Webinar Slides April 2016Is Your Company's Buyer in Asia? Webinar Slides April 2016
Is Your Company's Buyer in Asia? Webinar Slides April 2016
 
Raising Capital from Life Science Investors
Raising Capital from Life Science Investors Raising Capital from Life Science Investors
Raising Capital from Life Science Investors
 
Keys to Successful M&A: Transparency, Security, and Process
 Keys to Successful M&A: Transparency, Security, and Process Keys to Successful M&A: Transparency, Security, and Process
Keys to Successful M&A: Transparency, Security, and Process
 
Financial Basics for Startups: How to Think Like a CFO
Financial Basics for Startups: How to Think Like a CFOFinancial Basics for Startups: How to Think Like a CFO
Financial Basics for Startups: How to Think Like a CFO
 
Cybersecurity Brief: Understanding Risk, Legal Framework, & Insurance
Cybersecurity Brief: Understanding Risk, Legal Framework, & InsuranceCybersecurity Brief: Understanding Risk, Legal Framework, & Insurance
Cybersecurity Brief: Understanding Risk, Legal Framework, & Insurance
 
When your Business can Benefit from a Corporate Lawyer- and Tips to Save Mone...
When your Business can Benefit from a Corporate Lawyer- and Tips to Save Mone...When your Business can Benefit from a Corporate Lawyer- and Tips to Save Mone...
When your Business can Benefit from a Corporate Lawyer- and Tips to Save Mone...
 
When Should an Early-Stage Company Hire a CFO?
When Should an Early-Stage Company Hire a CFO?When Should an Early-Stage Company Hire a CFO?
When Should an Early-Stage Company Hire a CFO?
 
Optimal File Sharing and Storage: Dropbox V. Virtual Data Rooms
Optimal File Sharing and Storage: Dropbox V. Virtual Data RoomsOptimal File Sharing and Storage: Dropbox V. Virtual Data Rooms
Optimal File Sharing and Storage: Dropbox V. Virtual Data Rooms
 
Funding for Life Sciences: SBIR and STTR Grant Basics
Funding for Life Sciences: SBIR and STTR Grant BasicsFunding for Life Sciences: SBIR and STTR Grant Basics
Funding for Life Sciences: SBIR and STTR Grant Basics
 
Technology M&A: Deal Preparation and Management
Technology M&A: Deal Preparation and ManagementTechnology M&A: Deal Preparation and Management
Technology M&A: Deal Preparation and Management
 
The Art of the Deal- Webinar
The Art of the Deal- WebinarThe Art of the Deal- Webinar
The Art of the Deal- Webinar
 
Alternative Funding for Life Science Companies- Webinar Slides
Alternative Funding for Life Science Companies- Webinar SlidesAlternative Funding for Life Science Companies- Webinar Slides
Alternative Funding for Life Science Companies- Webinar Slides
 
The Power Of The Paperless Office
The Power Of The Paperless OfficeThe Power Of The Paperless Office
The Power Of The Paperless Office
 
Cybersecurity: Malware & Protecting Your Business From Cyberthreats
Cybersecurity: Malware & Protecting Your Business From CyberthreatsCybersecurity: Malware & Protecting Your Business From Cyberthreats
Cybersecurity: Malware & Protecting Your Business From Cyberthreats
 
Keys to Successful M&A: Transparency, Security, and Process
Keys to Successful M&A: Transparency, Security, and ProcessKeys to Successful M&A: Transparency, Security, and Process
Keys to Successful M&A: Transparency, Security, and Process
 

How To Protect Your Company's Intellectual Property

  • 1. How To Protect Your Company’s Intellectual Property
  • 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
  • 27. Thank You! Confidential ©2012 AppFolio, Inc.