INFO2014 - General Patent and a Case Study - Alex Levin

What is it? Teaser!

http://www.wikipatents.com/US-Patent-4344424/anti-eating-face-mask

Intellectual Property (aka PATENTS) -

And why CI people should care

"The advancement of the arts, from year to year, taxes our credulity, and seems to presage the arrival of that period when human improvement must end." - Henry Ellsworth, Commissioner of Patents, 1843. Ellsworth has been frequently misquoted. No Commissioner of the Patent Office ever stated that everything which can be invented has already been patented.

Disclaimer: The presenter has no intent for induction and denies liability for any cases of

awakening occurred during the next 6.5 hours.

The presentation is built in following way:

There are 118 slides in the presentation.

Every 10th slide is marked.

The Ultimate Business Model from IP Standpoint:

So, Why CI people should care?

• Providing C-level management with:

– Foresight into competition plans

– Possible opportunities

– Technological threats

– Creating and securing deal flow

– Defining core business strengths and weaknesses

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The Ultimate Business Model from IP Standpoint: where CI fits?

What is it?

http://www.patentstorm.us/patents/4320756.html

Slide #10.

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IP Basics:

The Turbo Roaster cooks moist, juicy, tender turkeys and chickens in half the normal time! Six pound chickens in 45 minutes! Twenty-five pound turkeys in about 2 hours&even stuffed! Patented vapor infusion system delivers heat and moisture to cook turkeys and chickens from the inside out in half the time.

Patent

• What Is a Patent? • A patent for an invention is the grant of a property right to the

inventor, issued by the Patent and Trademark Office. The term of a patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. US patent grants are effective only within the US, US territories, and US possessions.

• The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.

Patent

• What Is a Patent?

• A patent is a state-granted exclusive monopoly, provided in exchange for disclosure of invention. What defines this monopoly is the claims of the patent. What defines the invention is the description (specs).

Utility Patent Used To Look Like That:

And once granted, they look like that:

Utility Patent Looks Like That:

Patent Structure:

• Abstract

• Background

• Summary of the invention

• Description of Drawings

• Detailed Description of the invention

• Claims

• DRAWINGS

What is patentable?

• A machine (mechanism with moving parts)

• An article of manufacture (hand tool, diagnostic kit)

• A composition of matter (drugs)

• A process (a method of… surgery, business method)

• A new use or improvement of existing invention

• A modified living organism (Harvard mice? clones)

• Isolated or purified natural material (bacteria, proteins)

Priority Date:

Slide #20.

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Prosecution:

• Filing – Priority Date

• Examination – 2-4 years at USPTO (currently)

• Allowance (18.6m to First Action, 2.36 actions per disposal, 27.8m to Grant)

• Grant of Patent – Starts the actual (retroactive) protection

Patent Infringement: The Enemy Territory

Scenario A: A infringes B

• USPTO examines patentability, not infringement!

• The test for patentability: usefulness, novelty, non-obviousness.

• The test for infringement:

Scenario A: A infringes B

• 35 U.S.C. 271 Infringement of patent. • Infringement of a patent consists of the unauthorized making, using, offering for sale or selling any

patented invention within the United States or United States Territories, or importing into the United States of any patented invention during the term of the patent. If a patent is infringed, the patentee may sue for relief in the appropriate Federal court. The patentee may ask the court for an injunction to prevent the continuation of the infringement and may also ask the court for an award of damages because of the infringement. In such an infringement suit, the defendant may raise the question of the validity of the patent, which is then decided by the court. The defendant may also aver that what is being done does not constitute infringement. Infringement is determined primarily by the language of the claims of the patent and, if what the defendant is making does not fall within the language of any of the claims of the patent, there is no literal infringement.

• Suits for infringement of patents follow the rules of procedure of the Federal courts. From the decision of the district court, there is an appeal to the Court of Appeals for the Federal Circuit. The Supreme Court may thereafter take a case by writ of certiorari. If the United States Government infringes a patent, the patentee has a remedy for damages in the United States Court of Federal Claims. The Government may use any patented invention without permission of the patentee, but the patentee is entitled to obtain compensation for the use by or for the Government.

• The Office has no jurisdiction over questions relating to infringement of patents. In examining applications for patent, no determination is made as to whether the invention sought to be patented infringes any prior patent. An improvement invention may be patentable, but it might infringe a prior unexpired patent for the invention improved upon, if there is one.

Scenario A: A infringes B

• So, A indeed infringed B. Now what?

Scenario A: A infringes B

• How much??? • 35 U.S.C. 281 Remedy for infringement of patent. • A patentee shall have remedy by civil action for infringement of his patent.

• 35 U.S.C. 284 Damages. • Upon finding for the claimant the court shall award the claimant

damages adequate to compensate for the infringement but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.

• When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed…

• The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances.

Scenario A: A infringes B

• But who is A?

– A is the manufacturer/patentee(?) that infringed a patent assigned to B.

– A might have a patent for device, yet infringe B’s patent (improvement patent)

– Importer/Reseller of goods

– End User

Scenario A: A infringes B

• But who is B?

Infringement Who may start an action?

• Patent Troll (Holding Company)

• Pro-active R&D institution (university)

• Pro-active manufacturer/importer/reseller

• Any patentee/patent assignee.

Slide #30.

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Infringement Cost of an action?

• >4-5M dollars, with uncertain outcome.

STC

Cost of IP defense

Prevention Taking the extra mile

• Landscape Analysis

Patents: Defining the pool, tech, competition

Patents: Value Extraction

• Defense of existing proprietary technology

• Licensing

• Cross-Licensing

• M&A

Wrap Up US1

The curious case of Israeli start up

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The curious case of Israeli start up

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What’s wrong? • No competition awareness – simple googling is not

enough – NYU, Panasonic, Xerox have patent filings in the field

• No technological awareness – simple google.com/patents is not enough – artificial retina directly connected to visual cortex exists

• No clear competitive advantage – as there is no competition awareness – could be cost?

• No comparative advantage – as there is no technological awareness

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Bottom Line:

NO INVESTMENT PLACED

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Slide #40

1 more to go.

What is it?

http://www.wikipatents.com/US-Patent-4344424/anti-eating-face-mask

Wrap Up