Copyright © 2007-2011 Frisina, LLC Intellectual Property as a Business Tool Frisina, LLC Creating...

Intellectual Property as a Business ToolIntellectual Property as a Business ToolFrisina, LLC

Creating Wealth Through Intellectual Property TM

www.frisinaIP.com

IntroductionRepresentative Sectors • Chemicals• Polymers• Pharmaceuticals• Biotechnology• Biomedical• Medical Imaging • Advanced Materials• Nanotechnology• Semiconductors• Medical Instruments• Medical Tests• Liquid Crystals• Power Generation• Fuel Cells• Software• Internet Law• Business Methods

453 South High Street Suite 302

Akron, OH 44311

(330)338-0589 directdominic@frisinaIP.com

www.frisinaIP.com

Our mission is to create wealth for our clients through the strategic use of intellectual property.

Our mission is to create wealth for our clients through the strategic use of intellectual property. We understand the challenges facing businesses, and strive to secure and monetize our clients’ intellectual assets by couching sound legal strategy in innovative IP and business intelligence. With our combination of technical and legal expertise we are uniquely positioned to guide clients through the legal maze of intellectual property strategy facing both start-ups and more established ventures.

IntroductionIntroduction

• Patent BasicsPatent Basics

• From Conception to Capitalize From Conception to Capitalize

• Offensive Strategy: Excluding CompetitorsOffensive Strategy: Excluding Competitors

• Defensive Strategy: Maintaining Your Freedom to Operate Defensive Strategy: Maintaining Your Freedom to Operate

• Monetizing IP Monetizing IP

• Do I Need a PatentDo I Need a Patent

Patent BasicsPatent Basics

• Patentable subject matter– Any “…useful process, machine, manufacture, or composition of matter”

35 U.S.C. §101

• Confers the right to Confers the right to exclude othersexclude others from: from: – making, using, selling or offer to sell, or importing into the making, using, selling or offer to sell, or importing into the

United States United States

Patent BasicsPatent Basics

• TerritorialTerritorial– Only enforceable within the issuing nationOnly enforceable within the issuing nation– A foreign inventor can obtain a US patent and vice versaA foreign inventor can obtain a US patent and vice versa

• Time-limited Time-limited – Generally 20 years from the earliest effective filing dateGenerally 20 years from the earliest effective filing date

Patent Basics: Statutory BarsPatent Basics: Statutory Bars

• Certain acts can forfeit patentability Certain acts can forfeit patentability – Public disclosure, sales, offers for sale, etc. Public disclosure, sales, offers for sale, etc.

• Time limitsTime limits– one year grace period in the USone year grace period in the US– Immediate forfeiture in most foreign countries Immediate forfeiture in most foreign countries

• Absolute novelty requirementAbsolute novelty requirement

Patent Basics: Legalese

Legal Term

Prior Art:

Enabling:

Definition

Any technology

Any technology preceding your invention that may preclude patentability

Providing enough information so that a person having ordinary skill in the relevant art can make and use the invention

Legal Term

Practice:

Reduction to Practice:

Definition

Intellectual Property including patents, trademarks, copyrights, and trade secrets

Technology is “practiced” in the same sense that law or medicine is “practiced”

An invention is said to be reduced to practice when it has been developed to such an extent that it could be made using only ordinary skill in the art.

Legal Term

Assign:

Technology Space:

(aka “patent space”)

(aka “art space”)

Definition

To transfer ownership

The space defined by a set of inventive variables.

Technology Space

Robotics

Technology Space

From Conception to Capitalize

• Four Stages: – Conception – Proof-of-Concept– Commercialization – Enterprise

Concept Stage

• Conception; The Idea Stage – Focus of Activities:

• Investigating potential duty to assign • Determining the business model, and objectives• Assessing the patent landscape• Gathering resources: financial, technical, etc. • Maintaining secrecy

– Sources of capital • Personal finances, credit cards, family and friends.

Concept Stage

• The Business Model – Product: robotic devices for blister packing pills – Manufacturing: local (USA)– Markets: Worldwide, esp. USA, Europe, Japan, China– Distribution: inside sales directly to end users

Concept Stage

• Assessing the Patent Landscape– Where is IP activity occurring in our patent space?– Who are the players? – How well resourced are my competitors? – What is my litigation risk in this patent space? – How well developed are my competitor’s patent portfolios? – How will the IP landscape change over the next 5-10 years?

Concept Stage

Assessing the Patent Landscape

Concept Stage

•State-of-the-art search (a/k/a “collection search”)

– All patents in a given technology space

– Includes summary statistics and visualizations

Concept Stage

• RecapDetermined the business model, and long-term objectivesAssessed the patent landscapeGathered resources: financial, technical, etc. Maintained secrecy

Proof of Concept Stage

• Proof-of-Concept– Focus of Activities:

• Initial R&D to determine feasibility • prototyping • Likely to engage consultants and/or contractors• IP acquisition • May need outside funding

• Sources of funding: – Personal resources– Some state, local, and private funding sources are available

but it is very competitive e.g. JumpStart, LCCC/if* (25k/100k), Third Frontier

*Lorain County Community College Innovation Fund

• Incubators – Akron Global Business Accelerator (AGBA), GLIDE, Kent

Regional Business Alliance, MAGNET, etc. – Can be a great way to

• Build business relationships • Get coaching• Get facilities • Get funding leads

• Initial R&D and prototyping– DIY – Contract services:

• Scientific, engineering or other consulting firms

– Use NDAs and NCs until a patent application is filed

• IP Candidates: – Technology A: blister pack grabber – Technology B: blister pack loader– Technology C: blister pack sealer

• IP Acquisition – Strategically selecting technologies for patenting – Patent Availability/Novelty Searching– IP Intelligence Gathering – Preparing a patent application(s)

• IP Candidate Selection is based on – Patent Availability Opinion– Freedom to Operate (FTO) – IP Intelligence Report

• Our Choice: – Technology A: blister pack grabber

• Patent Application Filed– We are free to openly promote/disclose our invention – BUT BE CAREFUL

• Trade secrets• Subject matter not contained in the as-filed patent application

Commercialization

• Focus of Activities: – Potential new funding issue– Acting on the business model with our long-term objectives in

mind• Making products• Setting up distribution • Selling products

Commercialization

• Sources of funding – SBA Loans for moderate requirements – State/local/private grants and/or loans– VC and Angel investors

Commercialization

• Outsourcing versus manufacturing in-house – Outsourcing is an attractive option for new market entrants– In-house Manufacturing:

• Is a rare skill or specialized facility required?• Is the risk of disclosing your know-how is too great?• Is manufacturing very low volume?

Enterprise Stage

• Concerns and Opportunities – Sales growth – IP Strategy – Never stop innovating

Offensive Strategy

• Exercising the right to exclude others– Beyond reserving your niche

• Populating a patent space with a patent “family”

• Offensive strategic planning should include– Business executives, Legal, and R&D

Offensive Strategy: Patent Space

Offensive Strategy

• Raise competitors’ cost of doing business– Legal costs, R&D costs, operations costs…

• Using NPE’s to your advantage – Non-Practicing Entities (aka “Patent Trolls”)– Sell/assign your IP but retain an exclusive license

• Let the troll litigate and pocket the proceeds

Offensive Strategy

• IP “abatement” insurance policy– Pays for the cost of enforcement

• Enforcement – Enforcement begins with a C&D letter

• Litigation may be necessary

– Force a settlement – Litigate

Defensive Strategy

• “The best defense is a good offense” – Yogi Berra

• Defensive strategy is also risk management – Risk of having to sue others– Risk of being sued

Defensive Strategy Risk Management; Preventative measures

• Patent availability searching– Identifying potentially

problematic art• Draft around, • Flag for design around, or • Abandon early

• Freedom to Operate (FTO)

• IP purchases or licensing-inIP purchases or licensing-in

• ContractContract– Non-Compete agreementsNon-Compete agreements– Joint Development AgreementsJoint Development Agreements

• Defensive publication

Defensive Strategy

• Defending against patent infringement – Self-financed defense– IP Insurance

• defense policy• defense and indemnity policy

– Defensive patent aggregation services • Primarily for large entities

Defensive Strategy

• RPX Corporation www.rpxcorp.com

Monetizing IP

• Sale or Licensing-out– Non-core technology, – Non-productive technology– Non-threatening technology

• IP auction houses – www.redchalkgroup.com – www.adaptipventures.com – www.patenttransferltd.com

Monetizing IP

• Securitization of IP– Bond issue – Backed by licensing or royalty revenues– Existing income stream required – ipCapital Group (www.ipcg.com)

Monetizing IP

• Commercial lending – IP as collateral; must have “explicit” value – 10-40% LTV – Many banks do not make pure IP loans

• Angel investors or venture capital – Usually based on the IP’s speculative or “implicit” value – Warning: VCs want to be in the driver’s seat

Do I Need a Patent?

• Is a trade secret more appropriate? – Consider patentability (new, useful and nonobvious)– Consider the product life cycle

• Is your true interest exclusivity or stamping “patent pending” on your product

– Consider the difficulty of reverse engineering or independent development

• Cost benefit analysis– The cost of patenting (or failing to patent) versus the benefit conferred

Do I Need a Patent?

Cost/Benefit:

1. How much money do I stand to make?a) What would it cost to develop a product embodying the invention?

b) What would it cost to manufacture and market the product?

c) How much can I charge for the product?

d) What is the size of the market for the product?

2. … versus without a patent?

Do I Need a Patent?

If the difference between your share of the market with exclusivity versus without is greater than the cost of patenting then a patent is worth while. (e.g. initially about 5K plus up to an additional 15 to 20K over several years).

Do I Need a Patent?

Recap: 1.How much money do I stand to make?

a) What would it cost to develop a product embodying the invention?

b) What would it cost to manufacture and market the product?

c) How much can I charge for the product?

d) What is the size of the market for the product?

2.… versus without a patent?

Additionally:3. Do I intend to seek capital investors?

– IP is generally required

When to Patent

Conception Proof-of-Concept Enterprise

•Factors: – Stage of development – Activity of your Competition – Cost versus resources on hand

Thank YouThank YouFor Further Information

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