Intellectual Property as a Business Tool
Frisina, LLC
Creating Wealth Through Intellectual Property TM
www.frisinaIP.com
Copyright © 2007-2011 Frisina, LLC
Introduction
453 South High Street
Suite 302
Akron, OH 44311
(330)338-0589 direct
dominic@frisinaIP.com
www.frisinaIP.com
Representative 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
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.
Copyright © 2007-2011 Frisina, LLC
Introduction
• Patent Basics
• From Conception to Capitalize
• Offensive Strategy: Excluding Competitors
• Defensive Strategy: Maintaining Your Freedom to Operate
• Monetizing IP
• Do I Need a Patent
Copyright © 2007-2011 Frisina, LLC
Patent Basics
• Patentable subject matter
– Any “…useful process, machine, manufacture, or composition of matter”
35 U.S.C. §101
• Confers the right to exclude others from:
– making, using, selling or offer to sell, or importing into the
United States
Copyright © 2007-2011 Frisina, LLC
Patent Basics
• Territorial
– Only enforceable within the issuing nation
– A foreign inventor can obtain a US patent and vice versa
• Time-limited
– Generally 20 years from the earliest effective filing date
Copyright © 2007-2011 Frisina, LLC
Patent Basics: Statutory Bars
• Certain acts can forfeit patentability
– Public disclosure, sales, offers for sale, etc.
• Time limits
– one year grace period in the US
– Immediate forfeiture in most foreign countries
• Absolute novelty requirement
Copyright © 2007-2011 Frisina, LLC
Patent Basics: Legalese
Legal Term Definition
Art: Any technology
Prior Art: Any technology preceding your invention that may preclude
patentability
Enabling: Providing enough information so that a person having
ordinary skill in the relevant art can make and use the
invention
Copyright © 2007-2011 Frisina, LLC
Patent Basics: Legalese
Legal Term Definition
IP: Intellectual Property including patents, trademarks,
copyrights, and trade secrets
Practice: Technology is “practiced” in the same sense that law
or medicine is “practiced”
Reduction to Practice: 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.
Copyright © 2007-2011 Frisina, LLC
Patent Basics: Legalese
Legal Term Definition
Assign: To transfer ownership
Technology Space: The space defined by a set of inventive variables.
(aka “patent space”)
(aka “art space”)
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Pneumatics
Technology Space
Robotics
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Technology Space
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From Conception to Capitalize
Copyright © 2007-2011 Frisina, LLC
From Conception to Capitalize
• Four Stages:
– Conception
– Proof-of-Concept
– Commercialization
– Enterprise
Copyright © 2007-2011 Frisina, LLC
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.
Copyright © 2007-2011 Frisina, LLC
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
Copyright © 2007-2011 Frisina, LLC
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?
Copyright © 2007-2011 Frisina, LLC
Concept Stage
Assessing the Patent Landscape
Copyright © 2007-2011 Frisina, LLC
Concept Stage
Assessing the Patent Landscape
Copyright © 2007-2011 Frisina, LLC
Concept Stage
Assessing the Patent Landscape
Copyright © 2007-2011 Frisina, LLC
Concept Stage
Assessing the Patent Landscape
• State-of-the-art search (a/k/a
“collection search”)
– All patents in a given technology
space
– Includes summary statistics and
visualizations
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Concept Stage
• Recap
Determined the business model, and long-term objectives
Assessed the patent landscape
Gathered resources: financial, technical, etc.
Maintained secrecy
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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
Copyright © 2007-2011 Frisina, LLC
Proof of Concept Stage
• 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
Copyright © 2007-2011 Frisina, LLC
Proof of Concept Stage
• 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
Copyright © 2007-2011 Frisina, LLC
Proof of Concept Stage
• Initial R&D and prototyping
– DIY
– Contract services:
• Scientific, engineering or other consulting firms
– Use NDAs and NCs until a patent application is filed
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Proof of Concept Stage
• IP Candidates:
– Technology A: blister pack grabber
– Technology B: blister pack loader
– Technology C: blister pack sealer
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Proof of Concept Stage
• IP Acquisition
– Strategically selecting technologies for patenting
– Patent Availability/Novelty Searching
– IP Intelligence Gathering
– Preparing a patent application(s)
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Proof of Concept Stage
Copyright © 2007-2011 Frisina, LLC
Proof of Concept Stage
Copyright © 2007-2011 Frisina, LLC
Proof of Concept Stage
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Proof of Concept Stage
• IP Candidate Selection is based on
– Patent Availability Opinion
– Freedom to Operate (FTO)
– IP Intelligence Report
• Our Choice:
– Technology A: blister pack grabber
Copyright © 2007-2011 Frisina, LLC
Proof of Concept Stage
• 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
Copyright © 2007-2011 Frisina, LLC
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
Copyright © 2007-2011 Frisina, LLC
Commercialization
• Sources of funding
– SBA Loans for moderate requirements
– State/local/private grants and/or loans
– VC and Angel investors
Copyright © 2007-2011 Frisina, LLC
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?
Copyright © 2007-2011 Frisina, LLC
Enterprise Stage
• Concerns and Opportunities
– Sales growth
– IP Strategy
– Never stop innovating
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Offensive Strategy
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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
Copyright © 2007-2011 Frisina, LLC
Offensive Strategy: Patent Space
Copyright © 2007-2011 Frisina, LLC
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
Copyright © 2007-2011 Frisina, LLC
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
Copyright © 2007-2011 Frisina, LLC
Defensive Strategy
Copyright © 2007-2011 Frisina, LLC
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
Copyright © 2007-2011 Frisina, LLC
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-in
• Contract
– Non-Compete agreements
– Joint Development Agreements
• Defensive publication
Copyright © 2007-2011 Frisina, LLC
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
Copyright © 2007-2011 Frisina, LLC
Defensive Strategy
• RPX Corporation www.rpxcorp.com
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Monetizing IP
Copyright © 2007-2011 Frisina, LLC
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
Copyright © 2007-2011 Frisina, LLC
Monetizing IP
• Securitization of IP
– Bond issue
– Backed by licensing or royalty revenues
– Existing income stream required
– ipCapital Group (www.ipcg.com)
Copyright © 2007-2011 Frisina, LLC
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
Copyright © 2007-2011 Frisina, LLC
Do I Need a Patent?
Copyright © 2007-2011 Frisina, LLC
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
Copyright © 2007-2011 Frisina, LLC
Do I Need a Patent?
Cost/Benefit:
1. How much money do I stand to make?
a)
b)
c)
d)
What would it cost to develop a product embodying the invention?
What would it cost to manufacture and market the product?
How much can I charge for the product?
What is the size of the market for the product?
2. … versus without a patent?
Copyright © 2007-2011 Frisina, LLC
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).
Copyright © 2007-2011 Frisina, LLC
Do I Need a Patent?
Recap:
1. How much money do I stand to make?
a)
b)
c)
d)
What would it cost to develop a product embodying the invention?
What would it cost to manufacture and market the product?
How much can I charge for the product?
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
Copyright © 2007-2011 Frisina, LLC
When to Patent
Conception
Proof-of-Concept
Enterprise
• Factors:
– Stage of development
– Activity of your Competition
– Cost versus resources on hand
Copyright © 2007-2011 Frisina, LLC
Thank You
For Further Information
www.frisinaip.com
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Contact Me
(330)338-0589 Direct
dominic@frisinaip.com
Copyright © 2007-2011 Frisina, LLC