Building Shareholder Valuethrough Intellectual Propertyg p y
Deirdre E. Sanders, Esq.e d e Sa de s, sqMark B. Solomon, Esq.
May 28, 2013Presented to the Northeastern University High Technology
MBA Program
Hamilton Brook Smith Reynolds
Concord, MA Boston, MA
BNA's Patent, Trademark & Copyright Journal® -- Daily UpdateSeptember 28, 2012
Number 188 ISSN 1522-4325
Patents Become the New Currency Among Competing Tech CompaniesTech CompaniesPatents are emerging as a valued currency. This is creating significant opportunities for businesses to generate revenue. Banks are finding new business opportunities advising
i t t l t f t i ll d i t d bcompanies on patent sales, a turf typically dominated by lawyers....
IP is…
1 What Forms of IP can build assets? 2 How Do You Document Your Idea?3 How Do You Determine Ownership?4 How Do You Know When to File?5 How Do You Assess Where to File?6 H D Y Cl i th I ti ?6 How Do You Claim the Invention?7 How Do You Describe the Invention?8 How Do You Navigate the Process?8 How Do You Navigate the Process?9 How Do You Keep Options Open?10 How Do You Use an Issued Patent?10 How Do You Use an Issued Patent?
1 What Forms of IP can1 What Forms of IP can build assets?
Patents
Trademarks
C i htCopyrights
Trade secrets
...and more
CONCEPTION—CONCEPTION
APPLICATION FILING—(U S / FOREIGN) T i l Ti li(U.S. / FOREIGN)
EXAMINATION—Typical Timeline of a Process for Getting a Patent
ALLOWANCE—
GRANT—
Getting a Patent
GRANT
POST GRANT—
Patents – U.S. Timeline— Conceptionp
— Invention Disclosure Meeting
— File Application
Prep
pp
— Foreign File6 1 yrO
FFIPR
AVER
— Publication
Mo
CE AC
TIO
ROSEC
UTI
RAGE: >
2
— Allowance
ON
(S)
ON
YEARS
— Continuing Application— Issue/Grant
— Reexam/Reissue— Maintain3 ½
7 ½11 ½years
CONCEPTION— 2 How Do You DocumentCONCEPTION 2 How Do You Document Your Idea?
• Notebooks
• Internal invention disclosure forms
3 How Do You DetermineCONCEPTION— 3 How Do You Determine Ownership? Inventor assignment
CONCEPTION
APPLICATION FILING—(U S / FOREIGN) g
Joint ownership(U.S. / FOREIGN)
Agreements to consider: Non-disclosure agreement g
IP assignment agreement
Employment agreement
License agreement
4 How Do You Know WhenCONCEPTION— 4 How Do You Know When to File?
CONCEPTION
APPLICATION FILING—(U S / FOREIGN)
Legal deadlines (Bar dates) U.S. Foreign
(U.S. / FOREIGN)
Foreign
Prior to public disclosure Your own By others
Business Considerations
IP and Your Technology gyDevelopment
C ti0 Months
• Conception
0-3 Months
• Patent Applications: Utility, Design, Plant Applications
0-6 Months
• Other IP: Trademarks, Copyrights, Trade Secrets• More R&D
12 • Market Testing12 Months
Market Testing
18 Months
• Production• More Patent Applications
2 Years
• Product Release
CONCEPTION— 5 How Do You AssessCONCEPTION
APPLICATION FILING—(U S / FOREIGN)
5 How Do You Assess Where to File?
(U.S. / FOREIGN) Your markets
Your manufacturing
Your competitors’ markets
Your license agreementsg
Value Potential investors
Potential licensees
Obtaining IP Rights
United States
Patent Cooperation Treaty Regions and
Countries
The World
6 How Do You Claim theCONCEPTION— 6 How Do You Claim the Invention? Claims define invention
CONCEPTION
APPLICATION FILING—(U S / FOREIGN)
Claim scope Claim types
(U.S. / FOREIGN)
Claim elements
Business objectives Enforcement
Licensing“What is claimed is …”
Investment value
P t t R i tPatents—Requirements
35 U S C35 U S C35 U.S.C.35 U.S.C.§101 Utility§102 Novelty§103 Non Obviousness§112 Specification (written description, enablement, description, enablement, best mode, and definiteness)
Claims
US 7 319 321 Magnetic screening systemUS 7,319,321 Magnetic screening systemAssignee: Assurance Technology Corporation, Carlisle, MA (US)What is claimed is:1 A ti i t i i1. A magnetic screening system, comprising:
an arrangement of gradiometers each including at least three magnetometers;
a gradiometer processor in communication with the magnetometersa gradiometer processor in communication with the magnetometers that scales outputs from the magnetometers with unequal weights and combines the scaled outputs to orient a direction of sensitivity of the respective gradiometer toward a volume of interest; and
at least one arrangement processor in communication with the arrangement of gradiometers that uses the gradiometers in a collective manner to detect a target object.
ClaimsUS 7,658,916 METHODS OF ENHANCING
LYSOSOMAL STORAGE DISEASE THERAPY BY MODULATION OF CELL SURFACE RECEPTOR DENSITYRECEPTOR DENSITY
Assignee: Genzyme Corporation, Cambridge, MA (US)
What is claimed is:1. A method of treating Gaucher disease in a patient in need
thereof, comprising administering to the patient an effective amount of:amount of:
a) a glucocorticoid steroid that increases the surface density of mannose receptors on macrophages; and
b) imiglucerase, a recombinantly produced carbohydratemodified glucocerebrosidase;
wherein the glucocorticoid steroid is administered at a time sufficiently prior to administration of the imiglucerase to permit an increase in the surface density of mannose p yreceptors on macrophages in the patient prior to exposure of the macrophages to said imiglucerase.
Claims
US 7,181,097 Method and apparatus for stabilizing a high-gain, high-power single polarization EDFA
Assignee: MIT (Cambridge, MA)1. An optical amplifier, comprising: an amplifying optical path of elements of low
insertion losses including a non-lasing optical gain medium through which an optical signal is amplified; an optical return path by which amplified light from a first pass returns through the gain medium in a reverse pass through the gain medium; and at least one optical element in the optical return path between the forward pass and the reverse pass having a loss substantiallybetween the forward pass and the reverse pass having a loss substantially greater than the insertion losses of the elements of the amplifying optical path; the optical amplifier operating in saturation and being substantially non-lasing.
Claims
US 7,572,622 Heart preservation chamber TransMedics, Inc. (Andover, MA)TransMedics, Inc. (Andover, MA) What is claimed is:1. A heart preservation apparatus comprising: a housing defining a
chamber; an inclined trough, having a concave cross-sectional shape g g palong an axis of the chamber, said trough having an upper end and a lower end, to support a heart between the upper and lower ends of the inclined trough; and a connector in fluid communication with the heart and coupled to the housing at the upper end of the inclined trough andand coupled to the housing at the upper end of the inclined trough and coupled to the aorta of the heart in a manner placing tension on the aorta to maintain competency of the aortic valve within the heart.
Claims
6,754,584 Attitude Measurement Using a Single GPS Receiver with Two Closely-Spaced Antennas
Assignee: Enpoint, LLC (Lincoln, MA)1. A motion characterization system, comprising: two antennas, mounted to a y , p g ,
rigid body, to receive navigation signals; a collection of motion sensing devices, including rate gyroscopes providing poorer than ten degrees per hour accuracy, mounted on the rigid body to provide electrical signals providing motion information; and a processor electrically coupled toproviding motion information; and a processor electrically coupled to process electrical signals from the antennas and the motion sensing devices to provide an attitude measurement of the rigid body under arbitrary motion conditions.
Claims
Method and device for improving protein stability and solubility
Assignee: Expressive Constructs, Inc. (Worcester, MA)
What is claimed is:1. A method for protecting a protein from
proteolysis during Purification, comprising the step of contacting a
l th t i l d t i ithsample that includes a protein with a resin material that is coupled to an alpha-crystallin protein selected from the group consisting of p26, SicA and g p g p ,alpha A crystallin protein, the contact occurring at a pH in the range of from about 7 to about 8.
7 How Do You DescribeCONCEPTION— 7 How Do You Describe the Invention?
CONCEPTION
APPLICATION FILING—(U S / FOREIGN)
Support for claims
Legal requirements (U.S.)
(U.S. / FOREIGN)
Enablement
Written description
Best mode
8 How Do You NavigateCONCEPTION— 8 How Do You Navigate the Process?
CONCEPTION
APPLICATION FILING—(U S / FOREIGN)
Estoppel considerations Claim amendments
(U.S. / FOREIGN)
EXAMINATION—
Remarks on the record
Duty to disclose Known prior art
Relevant data
Patent No.Issue DateTitle
Examiner
InventorsAssignee
Appl. No.Filing Date
Related Apps ExaminerAttorney
pp
Class(es)
AbstractReferences Considered
Most Representative
Drawing
9 How Do You KeepCONCEPTION— 9 How Do You Keep Options Open? Application types
CONCEPTION
APPLICATION FILING—(U S / FOREIGN) pp yp
Continuation application
Continuation-in-part
(U.S. / FOREIGN)
EXAMINATION—
application
Divisional application
Why?
ALLOWANCE—
Why? Maintain priority to earliest
effective filing dateg
10 How Do You Use anCONCEPTION— 10 How Do You Use an Issued Patent? License
CONCEPTION
APPLICATION FILING—(U S / FOREIGN)
Sale
Attraction of investment
(U.S. / FOREIGN)
EXAMINATION— Attraction of investment
EnforcementALLOWANCE—
GRANT— Marking
Notice
Timing
GRANT
POST GRANT— Timing
Review: 1 Considering IP Options 2 Documenting Your Idea3 Determining Ownershipg p4 Knowing When to File5 Assessing Where to File6 Claiming the Invention7 Describing the Invention8 Navigating the Process9 Keeping Options Open10 Using an Issued Patent
Questions?Questions?
F i f tiFor more information …
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