Building Shareholder Valuethrough Intellectual Propertyg p y

Deirdre E. Sanders, Esq.e d e Sa de s, sqMark B. Solomon, Esq.

May 28, 2013Presented to the Northeastern University High Technology

MBA Program

Hamilton Brook Smith Reynolds

Concord, MA Boston, MA

BNA's Patent, Trademark & Copyright Journal® -- Daily UpdateSeptember 28, 2012

Number 188 ISSN 1522-4325

Patents Become the New Currency Among Competing Tech CompaniesTech CompaniesPatents are emerging as a valued currency. This is creating significant opportunities for businesses to generate revenue. Banks are finding new business opportunities advising

i t t l t f t i ll d i t d bcompanies on patent sales, a turf typically dominated by lawyers....

IP is…

1 What Forms of IP can build assets? 2 How Do You Document Your Idea?3 How Do You Determine Ownership?4 How Do You Know When to File?5 How Do You Assess Where to File?6 H D Y Cl i th I ti ?6 How Do You Claim the Invention?7 How Do You Describe the Invention?8 How Do You Navigate the Process?8 How Do You Navigate the Process?9 How Do You Keep Options Open?10 How Do You Use an Issued Patent?10 How Do You Use an Issued Patent?

1 What Forms of IP can1 What Forms of IP can build assets?

Patents

Trademarks

C i htCopyrights

Trade secrets

...and more

CONCEPTION—CONCEPTION

APPLICATION FILING—(U S / FOREIGN) T i l Ti li(U.S. / FOREIGN)

EXAMINATION—Typical Timeline of a Process for Getting a Patent

ALLOWANCE—

GRANT—

Getting a Patent

GRANT

POST GRANT—

Patents – U.S. Timeline— Conceptionp

— Invention Disclosure Meeting

— File Application

Prep

pp

— Foreign File6 1 yrO

FFIPR

AVER

— Publication

Mo

CE AC

TIO

ROSEC

UTI

RAGE: >

2

— Allowance

ON

(S)

ON

YEARS

— Continuing Application— Issue/Grant

— Reexam/Reissue— Maintain3 ½

7 ½11 ½years

CONCEPTION— 2 How Do You DocumentCONCEPTION 2 How Do You Document Your Idea?

• Notebooks

• Internal invention disclosure forms

3 How Do You DetermineCONCEPTION— 3 How Do You Determine Ownership? Inventor assignment

CONCEPTION

APPLICATION FILING—(U S / FOREIGN) g

Joint ownership(U.S. / FOREIGN)

Agreements to consider: Non-disclosure agreement g

IP assignment agreement

Employment agreement

License agreement

4 How Do You Know WhenCONCEPTION— 4 How Do You Know When to File?

CONCEPTION

APPLICATION FILING—(U S / FOREIGN)

Legal deadlines (Bar dates) U.S. Foreign

(U.S. / FOREIGN)

Foreign

Prior to public disclosure Your own By others

Business Considerations

IP and Your Technology gyDevelopment

C ti0 Months

• Conception

0-3 Months

• Patent Applications: Utility, Design, Plant Applications

0-6 Months

• Other IP: Trademarks, Copyrights, Trade Secrets• More R&D

12 • Market Testing12 Months

Market Testing

18 Months

• Production• More Patent Applications

2 Years

• Product Release

CONCEPTION— 5 How Do You AssessCONCEPTION

APPLICATION FILING—(U S / FOREIGN)

5 How Do You Assess Where to File?

(U.S. / FOREIGN) Your markets

Your manufacturing

Your competitors’ markets

Your license agreementsg

Value Potential investors

Potential licensees

Obtaining IP Rights

United States

Patent Cooperation Treaty Regions and

Countries

The World

6 How Do You Claim theCONCEPTION— 6 How Do You Claim the Invention? Claims define invention

CONCEPTION

APPLICATION FILING—(U S / FOREIGN)

Claim scope Claim types

(U.S. / FOREIGN)

Claim elements

Business objectives Enforcement

Licensing“What is claimed is …”

Investment value

P t t R i tPatents—Requirements

35 U S C35 U S C35 U.S.C.35 U.S.C.§101 Utility§102 Novelty§103 Non Obviousness§112 Specification (written description, enablement, description, enablement, best mode, and definiteness)

Claims

US 7 319 321 Magnetic screening systemUS 7,319,321 Magnetic screening systemAssignee: Assurance Technology Corporation, Carlisle, MA (US)What is claimed is:1 A ti i t i i1. A magnetic screening system, comprising:

an arrangement of gradiometers each including at least three magnetometers;

a gradiometer processor in communication with the magnetometersa gradiometer processor in communication with the magnetometers that scales outputs from the magnetometers with unequal weights and combines the scaled outputs to orient a direction of sensitivity of the respective gradiometer toward a volume of interest; and

at least one arrangement processor in communication with the arrangement of gradiometers that uses the gradiometers in a collective manner to detect a target object.

ClaimsUS 7,658,916 METHODS OF ENHANCING

LYSOSOMAL STORAGE DISEASE THERAPY BY MODULATION OF CELL SURFACE RECEPTOR DENSITYRECEPTOR DENSITY

Assignee: Genzyme Corporation, Cambridge, MA (US)

What is claimed is:1. A method of treating Gaucher disease in a patient in need

thereof, comprising administering to the patient an effective amount of:amount of:

a) a glucocorticoid steroid that increases the surface density of mannose receptors on macrophages; and

b) imiglucerase, a recombinantly produced carbohydratemodified glucocerebrosidase;

wherein the glucocorticoid steroid is administered at a time sufficiently prior to administration of the imiglucerase to permit an increase in the surface density of mannose p yreceptors on macrophages in the patient prior to exposure of the macrophages to said imiglucerase.

Claims

US 7,181,097 Method and apparatus for stabilizing a high-gain, high-power single polarization EDFA

Assignee: MIT (Cambridge, MA)1. An optical amplifier, comprising: an amplifying optical path of elements of low

insertion losses including a non-lasing optical gain medium through which an optical signal is amplified; an optical return path by which amplified light from a first pass returns through the gain medium in a reverse pass through the gain medium; and at least one optical element in the optical return path between the forward pass and the reverse pass having a loss substantiallybetween the forward pass and the reverse pass having a loss substantially greater than the insertion losses of the elements of the amplifying optical path; the optical amplifier operating in saturation and being substantially non-lasing.

Claims

US 7,572,622 Heart preservation chamber TransMedics, Inc. (Andover, MA)TransMedics, Inc. (Andover, MA) What is claimed is:1. A heart preservation apparatus comprising: a housing defining a

chamber; an inclined trough, having a concave cross-sectional shape g g palong an axis of the chamber, said trough having an upper end and a lower end, to support a heart between the upper and lower ends of the inclined trough; and a connector in fluid communication with the heart and coupled to the housing at the upper end of the inclined trough andand coupled to the housing at the upper end of the inclined trough and coupled to the aorta of the heart in a manner placing tension on the aorta to maintain competency of the aortic valve within the heart.

Claims

6,754,584 Attitude Measurement Using a Single GPS Receiver with Two Closely-Spaced Antennas

Assignee: Enpoint, LLC (Lincoln, MA)1. A motion characterization system, comprising: two antennas, mounted to a y , p g ,

rigid body, to receive navigation signals; a collection of motion sensing devices, including rate gyroscopes providing poorer than ten degrees per hour accuracy, mounted on the rigid body to provide electrical signals providing motion information; and a processor electrically coupled toproviding motion information; and a processor electrically coupled to process electrical signals from the antennas and the motion sensing devices to provide an attitude measurement of the rigid body under arbitrary motion conditions.

Claims

Method and device for improving protein stability and solubility

Assignee: Expressive Constructs, Inc. (Worcester, MA)

What is claimed is:1. A method for protecting a protein from

proteolysis during Purification, comprising the step of contacting a

l th t i l d t i ithsample that includes a protein with a resin material that is coupled to an alpha-crystallin protein selected from the group consisting of p26, SicA and g p g p ,alpha A crystallin protein, the contact occurring at a pH in the range of from about 7 to about 8.

7 How Do You DescribeCONCEPTION— 7 How Do You Describe the Invention?

CONCEPTION

APPLICATION FILING—(U S / FOREIGN)

Support for claims

Legal requirements (U.S.)

(U.S. / FOREIGN)

Enablement

Written description

Best mode

8 How Do You NavigateCONCEPTION— 8 How Do You Navigate the Process?

CONCEPTION

APPLICATION FILING—(U S / FOREIGN)

Estoppel considerations Claim amendments

(U.S. / FOREIGN)

EXAMINATION—

Remarks on the record

Duty to disclose Known prior art

Relevant data

Patent No.Issue DateTitle

Examiner

InventorsAssignee

Appl. No.Filing Date

Related Apps ExaminerAttorney

pp

Class(es)

AbstractReferences Considered

Most Representative

Drawing

9 How Do You KeepCONCEPTION— 9 How Do You Keep Options Open? Application types

CONCEPTION

APPLICATION FILING—(U S / FOREIGN) pp yp

Continuation application

Continuation-in-part

(U.S. / FOREIGN)

EXAMINATION—

application

Divisional application

Why?

ALLOWANCE—

Why? Maintain priority to earliest

effective filing dateg

10 How Do You Use anCONCEPTION— 10 How Do You Use an Issued Patent? License

CONCEPTION

APPLICATION FILING—(U S / FOREIGN)

Sale

Attraction of investment

(U.S. / FOREIGN)

EXAMINATION— Attraction of investment

EnforcementALLOWANCE—

GRANT— Marking

Notice

Timing

GRANT

POST GRANT— Timing

Review: 1 Considering IP Options 2 Documenting Your Idea3 Determining Ownershipg p4 Knowing When to File5 Assessing Where to File6 Claiming the Invention7 Describing the Invention8 Navigating the Process9 Keeping Options Open10 Using an Issued Patent

Questions?Questions?

F i f tiFor more information …

www uspto govwww.uspto.gov

or

deirdre.sanders@hbsr.commark.solomon@hbsr.com

(978) 341 0036(978) 341-0036