– The intellectual property systems throughout the world serve to purpose of providing full public access and use of innovative ideas
(which promotes innovation), and providing a foundation for economic wealth for the innovator during the period of exclusivity.
1

• Objective of Intellectual Property Management
– To create procedures that will encourage early and full disclosure of all potentially patentable and otherwise protectable technology from your research and development teams (i.e., bringing the ideas to the surface).
–
To establish criteria for evaluating invention and other innovation disclosures, and determining which new technology warrants consideration for patenting or copyright protection (i.e., what do we want to protect).
– To establish additional criteria for deciding in which countries patent protection should be obtained, as contrasted to where patent or trademark protection may not be cost beneficial, or where patents and trademarks may not be readily enforceable (i.e., where do we want protection).
– To create an awareness among all technical personnel o patent, trademark and copyright infringement avoidance, and from whom to seek guidance in avoiding infringement of another’s intellectual property rights.
– To create a patent and intellectual property portfolio that has both offensive and defensive capabilities vis-
à-vis your competitors and potential competitors, and which portfolio increases the value of your and your company’s intangible assets
2

– If your company is primarily driven by technology, it is highly recommended that an Intellectual Property
Audit be conducted, and periodically updated. This audit is for the purpose of providing an inventory of your company’s intellectual property assets so that information is readily available when it becomes necessary to enforce, license or sell any of those assets. A proper audit, in broad terms:
• Identifies all intellectual property in your portfolio, including patents, trademarks, copyrights, trade secrets, know-how, license agreements, technology transfer agreements, and anything else your company considers as intellectual property.
• Analyzes the categories of subject matter your company desires to protect, and includes a plan for identifying the categories of technology you desire to protect in the future.
• Includes a policy statement or manual setting forth internal procedures for the protection of your company’s intellectual property, and for maintaining the confidentiality of your company’s proprietary and trade secret information.
3

• Sole Inventor in an Alien Field
– A sole inventor in an alien field is one who has developed an idea or concept into a workable embodiment, which idea or concept falls into a technology arena totally alien to the field of that person’s everyday work or activities.
– If the inventor wants to start their own business to develop, market and sell the products or services incorporating their ideas, financing is almost always required.
– For example, if a novel product can be injection molded out of plastic, an initial expenditure of $40,000-$60,000 will be required to design and manufacture a mold which will produce the first prototype.
– Costs of finalizing and testing the design, manufacturing production versions, marketing the product, and creating a sales distribution network for the product can require financing of a million dollars or more.
– Consider licensing the invention.
4

• Strategic Development of Intellectual Property
– The marketing focus of the company’s products is identified, including the needs of potential customers and how competitive products or services presently fail to adequately meet those needs.
– The new technology and efforts to develop the technology required to meet the demands of customers is calculated. This includes identifying current technologies and products and services having strategic importance over the next three to five years, and identifying emerging technologies of your company, universities and other companies that are likely to be used by you or your competitors
– Research and development resources and personnel are allocated to create the new technology.
– A strategy is put in place to identify those innovations which should and can be protected with the proper intellectual property vehicles (i.e., patents, trade secrets, copyrights, etc.), and how unpatented technology can also be protect.
– Patent and other filings are put in place before any public disclosure of the technology.
– Continual monitoring of technology development process takes place to ensure that adequate protection is timely obtained on all improvements to, and new uses of, the basic technology.
5

• Disgorging Patentable Inventions
– A proven way to insure that innovative technology bubbles to the surface is to create an invention or innovation incentive or reward program. Ideas for such a program include:
• Innovator shares in a percentage of the profits or sales of the product or service embodying the new technology.
• Innovators paid a monetary reward upon the filing and/or patenting of an invention.
• Innovator may be recognized with a non-monetary gesture, such as a plaque, luncheon or dinner, extra vacation time, or payment of tuition for advanced education courses.
6

• Determining What and What Not to Patent
– How intellectual property may be used:
• Defensively, to protect and enhance your market position in the protected product or service by preventing competitors from copying your products. This could include developing protectable technology that would build a wall around other patents or technology your company owns, or to build a fence around your competitor’s technology.
• The generation of income revenues through the strategic licensing, or possible sale, of intellectual property assets.
• As an effective wedge in entering a new product market or geographic area, and gaining market share from a competitor.
• Assisting you in making trade-offs to acquire needed technology from a competitor.
• Convincing a competitor to establish a strategic business partnership with you to complete a business deal that you could not accomplish on your own.
• The merger with or acquisition of a competitor.
7

• Search Results
– A patentability search will allow you to determine whether broad or more limited patent protection is available.
– If your invention is truly unique, and broad patent protection is available, the patent you obtain on your invention should allow you to market your new product without serious competition during the introductory offering period, until and if a competitor figures out how to design around your patent, or develops and improvement on your patented technology.
– When the search results suggest that only limited patent protection may be available for your invention, further business considerations of a practical rather than emotional nature come into the equation. The cost of obtaining a patent or patents in the various markets where the invention has value must be weighed against the degree and nature of exclusivity a limited patent will provide.
8

• Business Factors Determining Whether to Obtain Patent Protection
– A proper intellectual property evaluation system should do the following:
• Determine those individuals, and where they are in your company or organization, who are responsible for, or are likely to, develop or create innovations related to new products or existing products.
• Establish a procedure where those individuals periodically advise management of all innovations they are working toward and/or have developed.
• Create a protocol for review of each innovation to determine whether intellectual property protection should be sought, based on the criteria set forth below.
• Importance of the technology
• Competitive Advantage
• Enforceability
• Commercial Value
• Licensing Value
• Foreign Markets
• Defensive Patenting
• Timing of Public Disclosure of the Invention
9

– Claims should be able to encompass the products and/or processes of a broad gamut of infringing conduct by present and future competitors at the manufacturing, distribution and user levels.
– Claims should be directed to sellers and manufacturers of infringing products, not end users.
10

• Determining Where to Obtain Patents
– In which foreign countries will your technology be manufactured and marketed, or reasonably expected to be marketed by you and your company?
– What is the possibility and probability of enforcement of the patent in the respective foreign countries?
– Where can your competitors be expected to manufacture and/or import or export competing and potentially infringing products?
– What is the cost benefit of the expenses anticipated to be incurred in filing and prosecuting foreign counterpart patent applications versus the commercial value of that technology to the company?
– Consider also that there may be secondary or smaller foreign markets in which patent protection should be obtained.
– Are there countries where you or your company can potentially license your technology to a manufacturer, distributor, competitor or to an entity in a totally different industry?
11

– Patent infringement can lead to unnecessary and very costly patent litigation, and can ultimately result in your product being removed from the market.
12

– Sales force should report similar competing products to management so that management may initiate an analysis to determine whether or not those competing products may infringe any patents or impending patent applications in the company’s portfolio.
– The market should also be surveyed for potential infringing importations.
13

• The Enforcement of Process Patent Claims against an Importer of a Product Made Abroad
– US Process Patent Act of 1988 states that if a foreign manufacturer uses a process outside of the United
States, which process is covered and claimed in a
United States process patent, the importation into the
United States of the product made by that patented process constitutes an infringement of the United
States process patent.
– This is one reason why it is important to include method claim in your patent applications where feasible.
14

– You or your company’s present and future interest in the technology.
– Any current business requirement involving the technology.
– The technical importance of the technology to competitors or others.
– The intended or future use, if any, by you or your company of the technology.
15