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Playing The Patent Game

Date post: 18-Nov-2014
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This slide deck is prepared by David Boag of Boag Law for a CoInvent seminar. This event gives an overview of the patenting process for small business owners and startups.
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PLAYING THE PATENT GAME September 4, 2014 www.boagip.com
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Page 1: Playing The Patent Game

PLAYING THE PATENT GAMESeptember 4, 2014www.boagip.com

Page 2: Playing The Patent Game

What’s a Patent?A government grant of the right to exclude others from making, using, or selling an invention.

Not a right to practice the invention.

Page 3: Playing The Patent Game

U.S. Patent (Application) Varieties

UTILITY PROVISIONAL DESIGN PLANT

Page 4: Playing The Patent Game

The Provisional Application Never examined Never becomes a patent Requires full disclosure Expires in 12 months Why bother?

Filing date, cost, buys time.

Page 5: Playing The Patent Game

Design Patents Protects ornamentation

that is non-functional Inexpensive and quick to

obtain 14-year term Damages: Infringer’s

profits

Page 6: Playing The Patent Game

Business Method Patents? Just a utility patent Often just a way of doing

business applied to new technology

1981: State Street Bank No clear lines: software,

business method, Internet

Page 7: Playing The Patent Game

Busiest (Patent) Supreme Court in 50+ Years

1. Alice v. CLS Bank (patentable subject matter)

2. Nautilus v. Biosig (claim indefiniteness)

3. Limelight v. Akamai (divided infringement)

4. Highmark v. Allcare (attorney fee awards in exceptional cases)

5. Octane Fitness v. Icon Health & Fitness (attorney fee awards in exceptional cases)

6. Medtronic v. Boston Scientific (burden of proof in licensee-brought actions)

Page 8: Playing The Patent Game

Patentable Subject Matter Patent Act:

process, machine, manufacture, composition of matter, improvement

Courts: laws of nature, physical phenomena, abstract ideas

The basic tools of scientific and technological work are never patentable.

Page 9: Playing The Patent Game

The Abstract Idea mathematical formulas algorithms fundamental economic practices methods of organizing human

activity an idea in and of itself

Page 10: Playing The Patent Game

The Abstract Idea mathematical formulas algorithms fundamental economic practices methods of organizing human

activity an idea in and of itself

BUT, methods and products employing abstract ideas may be patentable when used to perform a real-world function or achieve a concrete result.

Page 11: Playing The Patent Game

Patentable Subject Matter: Alice

[T]he claims at issue amount to "nothing significantly more" than an instruction to apply the abstract idea of intermediated settlement using some un specified, generic computer. Under our precedents, that is not "enough" to transform an abstract idea into a patent-eligible invention.

Alice Corp. v. CLS Bank International (2014)

See: bit.ly/1qpuucW (GigaOm); 1.usa.gov/1qpweTy (USPTO)

Meaningful limitations beyond generally linking an abstract idea to a particular technological environment.

Page 12: Playing The Patent Game

So You Still Want a Patent? Exclusivity Piques VC and investor interest Tangibility Caché Property right that could

outlast company Passive deterrent

Page 13: Playing The Patent Game

So You Still Want a Patent? Expensive ($10-25K+) Requires detailed

disclosure Patent could be of little

value in a crowded field

Page 14: Playing The Patent Game

Patents and Startups—Alternatives

Preventative Disclosure No one else can patent

Trade Secret Must be kept

confidential Disclosure ends

protection

v.

Page 15: Playing The Patent Game

Strategy I—Get Good Patents Identify patent-worthy

inventions Core to business?

Alternatives? Aim for not just any patent, but

a valuable one Too broad, not patentable or

invalid Too specific, not valuable

Page 16: Playing The Patent Game

Strategy II—Use the System Wisely

File early enough Meet statutory

deadlines Be first to file

Repeat as development continues

Post-grant procedures

Page 17: Playing The Patent Game

Trap I: Public Use of Invention One year deadline after your first

public disclosure! Use, sale, offer for sale,

demonstration, disclosure Beware of the “absolute novelty”

jurisdiction No patent with any pre-filing

disclosure Europe

Page 18: Playing The Patent Game

Trap II: Inventorship Named “inventors” must invent

conception, not just implementation

By default, an employee owns what (s)he does on the clock, even with your resourcesUse employment agreements

Page 19: Playing The Patent Game

Trolls, NPEs, and PAEs

• All shapes and sizes• Different challenge than traditional

patent holder• impervious to counter-suit• no interest in business solution• BUT, not interested in destroying a

competitor

NPE: Any entity that earns the majority of its revenue from the licensing or enforcement of its patents.

Page 20: Playing The Patent Game

Strategy III—Offensive Defense

Conduct due diligence before the troll calls

Conduct freedom to operate searches

Counsel can help you identify and avoid existing patents

USPTO: 5,342 P.P.W. in 2013

Page 21: Playing The Patent Game

“Everybody has a plan until they get punched in the mouth.” Mike

Tyson

Mike Tyson.jpg

Page 22: Playing The Patent Game

Trap III: Patent Infringement Cost of an average patent

lawsuit ($1-$25M at stake): $2.8M (AIPLA)

The Sport of Kings 6,092 infringement suits in

2013 No accidental infringement

defense

Page 23: Playing The Patent Game

Strategy IV—React Smartly to Threats

Don’t panic Don’t ignore notice

letters Is the letter detailed

or one-size-fits-all? Competitor?

EPR, PGR, IPR @ USPTO

Rarely a DIY project

Page 24: Playing The Patent Game

Questions?

[email protected]


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