Maier fenster

IP Strategy for Guiding Decision Making

Maier Fenster All rights reserved © 2012

Decisions & Planning

• Questions you should be able to answer

– Should we spend $$$

– What is connection between IP and company (should be “value”)

– Are we protected

• This talk will focus on patents

• Plans for trademarks, etc. look different

• Hope to give enough so you can do this at home, perhaps not alone

2 IP plans MIT 2012

Sample IP Strategies

• (intentionally left blank)

• Spend until you run out of money

• Decide as you go along and ignore the “oops”

• Built to match business plans, strategy & contingencies

3 IP plans MIT 2012

What Might an IP Strategy Look Like?

• A simplified example

• Hypothetical company – RetiView

– Direct retinal projection of images using glasses with scanning laser

• Will show general structure first

– Need oriented, not document oriented

Then will skim through some considerations which affect contents of plan

• A few words on how to use plan

• Note structure of plan should be personalized

4 IP plans MIT 2012

Example Patent Strategy Plan What USA EPO … Priority date Issue date Notes

Concept A A B Q1 - Nice to have

Product 1 A B - Q1 Q8 USA Sales Q9

Product 2 B B - Q4 Q12 USA Future option

Technology 1 A B B Q1 Q7 EPO Critical

Technology 2 B B - Q3 Q11 Useful

Problem 1 A A (?) - Q1 Q12 Blocking

Usage 1 A A - Q2 - Visible

Competitor 1 B A B Q2 - In field

Competitor 2 A B - Q4 - Keep out

Exit 1 A A - Q2 Q8 M&A

Exit 2 B B B Q4 Q10 License

Other A*3 B*3 B*2 Q5 Q13 Fashion demand

5 IP plans MIT 2012

Addendums to Plan

• Alternatives & Fallbacks – money, prior art, competition, R&D – Priorities of plans, not (only) of elements

• List of Weaknesses • List of Underlying considerations (see below) • FTO needs & policy • General rules re division of money

(past/present/future/other) • Expected unattributed IP needs • Plan shows what you want & what you have • Decision making & IP extraction processes

6 IP plans MIT 2012

Problems and Opportunities

What technological problems are you aware of? – That competition would probably need to

solve?

What new business opportunities are created by the technology?

• Can you identify concepts? • Can you identify usage and other “exposed”

features? • Marketing, manufacturing & licensing

issues

7 IP plans MIT 2012

Example “Problems”

Safety

Image stability

Dealing with multiple focus and pupil and location conditions

• Intensity matching

• Weight

• Self calibration

Which are trouble for lens projection systems?

8 IP plans MIT 2012

Example “Usage”

• Operation during saccades

• Matching image to ambient and target light

Usage of peripheral vision cues

• Client/server/cloud billing architecture

9 IP plans MIT 2012

Example “Products”&“Technologies”

• Products

Wireless Add on to existing glasses

All-in one glasses with CPU and data link

– Desktop projector

• Technologies

Beam scanner

– Eye data processing

• How many of each?

• Where is focus of plan? 10 IP plans MIT 2012

Product, Technology, Problems & Usage

What USA EPO … Priority date Issue date Notes













11 IP plans MIT 2012

Competition & Publications

• Copy-orientation of market – carbon copy or inspiration?

Countries of location and sale

• Comparative Beauty

• FTO or not

• Degree of overlap of with competitor

• What publications are expected, guessed at? – Control your own

– Anticipate others’

Offensive & defensive IP & scary IP


Competition What USA EPO … Priority date Issue date Notes














R&D

• What will be discovered when

• Relationship between discovery and publication

• Risk/Likelihood of discoveries

Where are workarounds expected

• How difficult will a workaround be for others?

• Number of expected alternative solutions

• Clinical trails, experiments, etc.


Money

• How much is available?

When will it be available?

• What IP is needed to make money happen?

• Dog & Pony shows

Attractive IP


Exits

• Sales – Marketing oriented IP – Manage competition

• M&A Poison pill patents – Integration patents – Blocking competition

• License – Easy to police IP – Match technology being sold and end-user needs

• Other


Exits What USA EPO … Priority date Issue date Notes














Time

• Timing of R&D, publications, marketing, money

• Prepare for 1, 5, 10 years down the road

When do you need priority date, publication date, issue date

• It is all prediction


Timing What USA EPO … Priority date Issue date Notes














Example Q&A

• We discovered X. What, if anything, should we file for? Maybe Y?

• Examiner allowed some claims, should we fight for more?

• Should we file in China, Korea, etc.?

• What should our budget look like?

• It is difficult getting this patent. Should we give up?

• Does our IP match our business plans?


Example Patent Strategy Plan What USA EPO … Priority date Issue date Notes














Summary

• Plan is dynamic

– Look at it and change it

– Show it to investors, decision makers, etc.

• We have seen an example IP strategy plan

• We have seen some issues and how they are reflected in the plan

• Questions?


Thank You

• If you do not have an IP plan, go build one! - Tip: ask your IP advisor for help

• Then use it


Business

Maier fenster