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Creating & Commercializing Your Patents Portfolio
“Supersize” your profitability!
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notaries
Israel is known for it’s high tech industry – Why?
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notaries
IsraelIsrael : :
A Silicon A Silicon “Wadi“Wadi””
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notaries
Recent Amendments to the Recent Amendments to the Research & Development LawResearch & Development Law
Allows the transfer of know-how abroad
Allows the transfer of manufacturing abroad
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notaries
Commercialize your Patents
How do you make money out of knowledge?
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notaries
Why Commercialize Patents?• Maximize returns on your patents investments with little
“out of pocket” expenses.
• Utilize and profit from dormant patents that has great monetary value.
• Promote your technology and strengthen your position in the field of your business – be the market standard!
• Create additional shareholder value for your company.
• Promote your long term financial and technological strategy.
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notaries
How do you commercialize Patents?
• License your IP to those that really need it!• Cross-License your IP in order to lower development costs –
create monetary value!• Enforce your rights against Infringers!• Promote market research and technology awareness in your
organization• Create and manage a commercial IP enforcement program for
your organization• Centralize “command and control” of your patents• Inventory and understand your own technology!• Explore the applicability of your technology to other fields
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notaries
2009 Patent Litigation
January: 209 Patent Infringement cases filed in the U.S
• 32 Plaintiffs were patent holding companies (15.3%)• 119 Named Defendants in NPE Cases• An average of 3.72 Defendants per NPE Case
Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notaries
2009 Patent Litigation
February: 190 Patent Infringement cases filed in the U.S
• 30 plaintiffs were NPEs (15.8%)• 195 Named Defendants in NPE Cases• An average of 6.5 Defendants per NPE Case
According to Lex Machina, patent cases in 2008 had an average of 2 63 defendants
Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notaries
Accused Phones
Apple iPhone Galaxy S 4G Galaxy S II (AT&T)
Galaxy S II (i9100)
Copyright © Brooks Kushman P.C.
Accused Tablets
Apple iPad Galaxy Tab Galaxy Tab 10.1
Copyright © Brooks Kushman P.C
Asserted Patents
Utility Patents Design Patents
‘163
Double-Tap zooming & Centering
‘381
‘Bounce-back’ feature when scrolling beyond the edge of a page
‘915
Pinch to Zoom and One-Finger Scrolling
‘087
Ornamental design of the front of the iPhone
‘305
Rounded square icons on interface
‘677
Ornamental design of the front of the iPhone with a translucent black display
‘889
Relates to the industrial design of a tablet computer
Copyright © Brooks Kushman P.C
Design Patent: ‘677
• Overview: Apple's ‘677 patent covers the design of the front of the iPhone with a translucent black display.
• Infringing Devices: The Samsung Fascinate, the Galaxy S 4G, the Galaxy S II, the Epic 4G Touch, the Skyrocket, the Showcase, the Infuse 4G, the Mesmerize, and the Vibrant
Copyright © Brooks Kushman P.C
Design Patent: ‘677
Copyright © Brooks Kushman P.C
Design Patent: ‘677
• Overview: Apple's ‘087 patent covers the design of the front of the iPhone
• Infringing Devices: The Samsung i9000 Galaxy S, the Galaxy S 4G and the Vibrant
Copyright © Brooks Kushman P.C
Design Patent: ‘087
Copyright © Brooks Kushman P.C
Summary• Learn from successful “Patent Rich” companies
such as IBM• Maximize revenues from your hard earned and
accumulated Patents • Maximize your shareholders return on past and
future investments!• Don’t loose track of your technology!• Centralize your patents “Command and
Control”• Study changing and adapt to market trends
© Copyright
Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notaries
