Intellectual Property Management

IP Management Tools & Strategies : Bit by Bit / Putting it

TogetherPierce Law Information Literacy Program

Professor Jon Cavicchi©2010

Bit by bit / Putting it togetherPiece by piece Every little detail plays a partsEverything depends on execution

Putting it together / That's what counts!Ounce by ounce / Putting in togetherFirst of all you need a good foundationOtherwise it's risky from the startBut without the proper preparation

Link by link / Making the connections

Not the same universe as past generations…

Professors Homer Blair & Karl JordaIP Managers for Big Pharma and Itek Government Spy Satellites : 1960’s – 1980’s

IP Managers in the New Millenium

IBM Example IBM, the U.S. company that gets more patents than anybody, in an internal study some 10 years ago determined that of the 10,000 of their own patents studied only 40 had real value. Only 40. That's a whopping 0.4%.

So why does IBM continue to get around 3,000 patents year after year? Because, for them, the file "early and often" scenario of applying for patents is far cheaper than the alternative of studying the potential value of a budding technology or invention. So they spend the $3,000 or so it costs for their mostly in-house patent practitioners to get a patent rather than spend $10,000, $20,000 or even more it would take to analyze future business viability. And their method pays off big time. That tiny little 0.4% nets, not grosses, nets about $2 billion a year in licensing fees alone (they don't account separately for patents where they protect their own proprietary exclusivity to some profit stream from their own products). But you can't afford the "file early and often" method of applying for patents in the hopes for a big payoff.

IP Management in Time & Space

IP MANAGEMENT IS MULTIDIMENSIONAL• Law

– IP– Licensing / contract– Legal & non-legal data

• Business• Management• Non profit technology transfer• Managing university knowledge assets• Custom Solutions = Consultants• Technology = software

JD

MBA

IP Life Cycle

Value Extraction Chain

IP Business Transactions

University Setting

Hi, Jon:

To cut to the chase, though, most of the tools that are used in managing IP developed in the university setting have to do with managing the flow of discoveries/technology from the research lab to the TTO and then on to commercialization partners. Most of the rest of the resources that people use are in the following areas:

1. IP valuation tools (how to measure value)2. Marketing tools (all kinds of business reports indicating what companies are active in which technology areas - used to target prospective licensees, of course)3. Patent searching tools, naturally, not so much to see what might be blocking but to see whether a disclosure is novel.

Then, there is the reverse side of IP Management - that is managing 3rd party rights where universities are users as opposed to developers of IP.

These are mainly internal management systems and there aren't tools used - other than IP lawyers who understand the legal limitations on non-commercial or academic use of 3rd party owned patents and copyrights.

--Karen

What are you managing?

Breadth of IP Management Course

Legal Research Tools & StrategiesRemember those core primary and secondary sources, access, validation tools…

Super Syllabus

• Integration of Intellectual Property Rights• Example of Integration and Overlapping IP Rights• Ideas and Inventions• Record Keeping & Laboratory Notebooks- Good

Housekeeping Practices• E-Notebooks• Harvesting/Extracting Inventions – 14 Point Policy• Invention Disclosures

• Inventorship and Joint Inventorship• Inventorship versus Ownership of Inventions

– Ownership outside US• Management of Employee Inventions

– Disclosure Review Committees / Stage Gate Processes• Types of Patent Searches / Tools for Accessing

Information• Assessing Patentability• Trade Secrets – Policies and Procedures• To Patent and/or to Padlock• Creating a Synergistically Balanced Portfolio

– proper balance between patents, trade secrets and other forms of intellectual property

• Defensive Publications• Budgetary Considerations

• Maximizing Preservation of IP and Avoiding Disclosure/Dissemination/Misappropriation– New Hire Procedures– Entrance Interviews– Employment/Proprietary Rights/Invention Agreements – Non-Compete Provisions; Enforceability of Same– Termination Agreements/Exit Interviews

• Disgruntled Employee/Inventor

• Agreement Basics– Confidentiality Agreement

• One-way; Two-way; Corporate Policy

– Collaboration / Joint Development– Consultant Services

• Technical, Marketing/Advertising, Web Design

• Patent Processes / Practice before the USPTO– Preparation & Prosecution– Interviews– Issuance– Appeals– Written Description / Best Method Requirements– Export License / Secrecy Order

• Rule 56 / Inequitable Conduct

• International / Foreign Filing Strategies– PCT / EPC– Non-PCT Countries

• Developing & Maintaining an IP Budget

– Management of Costs in the IP Portfolio• Outside Counsel• Annuities• 3rd Party Matters (Oppositions)

• Trademarks– Corporate Trademark Policy– Trade Names, Housemarks, Slogans– Selection, Searches, Clearance– US & International Clearing & Filing Strategies– Tiering Country Selection– Developing and Meeting a Budget– Establishing /Maintaining Proper Use

& Care of Trademarks

• Copyrights– Policies and Review Procedures– License and Assignment– Copyright Office

• Advanced Management Strategies

– Offensive and Defensive– Interference Practice• Conception, Reduction, Diligence, Corroboration• Interference Proceedings

– Reexamination Practice– Reissue Practice

• Third Party Matters–Competitive Analyses (Mapping & Other

Tools)–Third Party Patents & Handling of Same

–FTO Studies (Technical and/or Legal)–Outside Submission & Policies

• Managing the IP Portfolio– IP Policies

• Protection of Company-Owned IP• Third Party IP, Marking, • Publication• Technical Publication Review• Advertising Review

– IP Strategies • Understanding, developing, executing,

managing IP strategies

– Committees, Budgets• consistent with overall business objectives

– IP Audits (Due Diligence)– User Friendly Portfolios– IP Education

• New Hiring, • IP 101• Advanced Inventor Presentation

– Subject Matter & Target Audiences

Legal Treatises - NOT

Legal Periodical Literature

Follows the theme…Multifocul

Use general tools and dedicated IPM titles

1990 1992 1994 1996 1998 2000 2002 2004 2006 2008 20100

10

20

30

40

50

60Intellectual Property Management Periodicals Per Year

Year

Num

ber

of P

erio

dica

ls

Trendline

0

50

100

150

200

250

12

205

101

2431

2026

2025

40

Intellectual Property Management Article Topic Breakdown

Num

ber

of A

rticl

es

Patent Infringement Patent Law Patent Licensing Patent Management Patent/Copyright Overlap0

5

10

15

20

25

30

35

40

13

26

13

38

30

Intellectual Property Management Articles: Patent Topics Breakdown

Num

ber

of A

rticl

es

Copyrigh

t infri

ngemen

t

Copyrigh

t Law

Copyrigh

t Lice

nsing

Digital

Rights

Fair U

se

File S

haring

Patent/C

opyrigh

t Ove

rlap

Piracy

0

5

10

15

20

25

30

35

40

76

3

35

57

30

3

Intellectual Property Management Articles: Copyright Topics Breakdown

Num

ber

of A

rticl

es

Dedicated Journals

Online Journals

University Webs

Research Rule 1 : use human

beingse.g. Prof. Hersey

Lots of Federal involvement with university licensing

Special Interest Groups

Continuing Legal Ed (CLE)

Professional Associations

2-B CP: Developing a Robust IP Strategy to Insure IP Supports your Corporate Objectives

3-B CP: Strategies for Intellectual Property Management in a Difficult Economy

4-B CP: Intellectual Property Strategy in Real Life: Integrating Intellectual Property Strategy Development with Other Initiatives

6-C HTS: Intellectual Property Issues Facing Companies in Turbulent Times: Telecommunications in Turmoil

Accounting Firm Giants

MANAGING PATENT LITIGATION: SUCCESSFUL RESULTS AT REASONABLE COST Mark L. Levine Alan E. Littmann Bartlit Beck Herman Palenchar & Scott LLP

MANAGING PATENT LITIGATION COSTS Christopher O. Green James F. McDonough III Fish & Richardson P.C.

HOW TO SUCCESSFULLY MANAGE COSTS IN PATENT CASES FROM THE PERSPECTIVE OF IN-HOUSE COUNSEL Andrew L. Schaeffer E.I. du Pont de Nemours and Company

MANAGING INTELLECTUAL PROPERTY IN AN ECONOMICALLY CHALLENGING ENVIRONMENT, OR HOW IN-HOUSE COUNSEL CAN PAY FOR THEMSELVES Carolyn Blankenship Thomson Reuters Copyright

ECONOMIC APPROACHES TO INTELLECTUAL PROPERTY POLICY, LITIGATION, AND MANAGEMENT Dr. Gregory K. Leonard Lauren J. Stiroh NERA Economic Consulting

PATENT PORTFOLIO MANAGEMENT Noreen Krall Sun Microsystems Inc.

EFFECTIVE MANAGEMENT OF AN INTERNATIONAL TRADEMARK PORTFOLIO John D. Danforth

SOME THOUGHTS ON BEST PRACTICES FOR THE ATTORNEY-CLIENT COMMUNICATION AND THE CORPORATE PATENT COUNSEL John C. Todaro Merck & Co., Inc.

CORPORATE COUNSEL'S ROLE IN PATENT LITIGATION: MANAGING A LEGAL TEAM TO MEET BUSINESS OBJECTIVES Robert A. Armitage

Seminars & conferences for lawyers & C level executives

Webinars

Free Content

2010 Winter Meeting:

E discovery: Best Practices for Chief IP Counsel

In Re: Bilski

IP Department

Think Before You Hit Send: What You Must Know To Protect Attorney-Client Privilege of Corporations In Patent Cases and In The Global Business Environment.

Legislative Update

Trade Secret Protection in a Global Economy

What we learned about resolving IP disputes in an economic downturn and how to apply those lessons learned going forward.

Alternative Approaches to Reducing Patent Litigation Costs

Regional Patenting Authorities /NGOs

National Offi ces

Web 2.0 : Social networking & content

Blogs

Solutions ProvidersThe new frontier…

They are coming out of the woodwork…

INFORMATION MANAGEMENT * Manage contracts, including licensing, employment, NDAs, vendor agreements and more * Get a unified view of all commitments and liabilities and visibility to all incoming and outgoing obligations * Search, roll up, alert and report on expirations, renewals, warranties, indemnifications and annuity date * Generate contract reports linked to other factors, such as royalty payments related to a particular technology or all agreements with a particular outside firm * Complete view of your portfolio by integrating data from multiple docketing systems, databases, spreadsheets and other sources. It shows you the all-important relationships among people, assets, activities and organizations. The system generates alerts to keep the right people proactive about deadlines and obligations. And it gives users ultra-flexible reporting capability to extract exactly the information they need when they need it. It even keeps you up to date on technologies, competitors and information from IP offices.

WORKFLOW MANAGEMENT * Streamline workflow and facilitate repeatable processes, reducing contract management costs * Manage contract approval processes, whether serial or parallel

RISK MANAGEMENT * Maintain meticulous records and an audit trail of all contract-related activities to aid regulatory compliance * Ensure thorough, efficient due diligence by integrating information key to transactions and litigation * Monitor expense, royalty and other revenue-related agreements and issue alerts on missed payments or forecasts

“Full Service” Law Firms

IP Management ambulance chasers

A firm that helps schools set up patents for their discoveries and

assists in finding public companies looking to purchase

them. The company calls itself an intellectual property

matchmaker.

Technology Exchanges

Putting it Together…

• Use technology to make you an information literate IP manage– RSS feeds– Integrating social networking– Clipping services / Alerts (e.g. Wexis, Google,

Amazon…)• Use human beings– Join professional associations– Law librarians are trained to filter data to provide you

information