Valerie S. Gaydos Angel Investor President, Capital Growth, Inc. How Proposed Patent Reform Increases Risk for Start-Up Investors

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1 Valerie S. Gaydos Angel Investor President, Capital Growth, Inc. How Proposed Patent Reform Increases Risk for Start-Up Investors August 30, 2011

2 Valerie S. Gaydos Serial Entrepreneur Angel Investor: Angel Venture Forum Angel Investor: Lancaster Angel Network Member: Angel Capital Association (Policy Committee) Board: Center for New Technology Enterprise Past President: Pennsylvania Angel Network Past Director: Private Investors Forum (PIF) Past Director: Angel Venture Fair (AVF) Founder & President: Capital Growth, Inc. (Publishing) Past Director: Greater Baltimore Technology Council Research Analyst: Pennsylvania Senate Staff Assistant: U.S. Senator Heinz (PA) Dickinson College: Russian Language & Economics

3 Angel v. Venture Individuals Investing own money Cashed out entrepreneurs Funds Investing other people s money (OPM) Career Investors, Fund Partners, MBAs Min. $50-$100k Avg.$300,000 Assistance Min. $3m-$4m Avg.$3,000,000 Board seats & control

4

5 Investor Risk General Business Risk Market - Will someone buy it? Product - Does it Work? Management - Execution. Can this team do it? Competitive Position - Is anyone else doing it? Investment Risk Financial - Are the terms right? Liquidity/Exit - Can I sell it? Technology/IP - Is it proprietary? (Do they have patents? Do I have something to sell?)

6 Massive Change Uncertainty

7 Patent Reform Increases Risk to Start-Up Investors Raises costs for start-ups and reduces their profitability. Tilts playing field in favor of multinational corporations (market incumbents) with existing patent portfolios over start-ups. Creates uncertainties of investing in start-up IP due to a myriad of new legal pitfalls which disfavor start-ups. Strips the USPTO of needed funding

8 Key Patent Reform Challenges For Investors & Start-up 102 (a) Weakened Filing Grace Period 135 New Derivation Proceedings Expansion of Post Grant Review

9 Weakened Filing Grace Period Current: Allows inventors to freely publish or sell their creation for up to 12 months after inventing without losing their patent rights. Use of inexpensive logbooks to document invention. Proposed: Any public disclosure of the invention (filing a patent application, public use, offer for sale, actual sale, publication) by anyone other than the inventor at any time before the filing would bar a patent.

10 How a Weakened Filing Grace Period Affects Investors Inventors much less open with potential investors, customer or employees for fear of disclosing anything which can invalidate patent rights. Time & funding used for costly paperwork and legal fees - NOT to test and validate the product or market, R&D, building a business, buying inventory, jobs. Ordinary business activities may create risks that can destroy patent rights later on if challenged. Increased due diligence required for investors to ensure that no previous disclosures were made before filing. More but lesser quality patents filed - increasing backlog.

11 New Derivation Proceedings Current: Interference proceedings determine first to invent. Proof of invention through well documented logbooks. Proposed: New Derivation Proceedings will be used determine if the inventor named in an earlier-filed patent application derived the subject matter from a later-filed application.

12 How New Derivation Proceedings Affect Investors A well funded later-filed patent applicant can use the legal system to knock out a less well funded first to file inventor. Derivation difficult to prove if the first inventor has no right to discovery on the party who derived their patent from the actual inventor. A later filed patent applicant can invalidate first to file patent by showing that inventor may have previously disclosed it. Many new rules that defy the nature of invention.

13 Post Grant Review Current: Patents challenged on a limited basis. Proposed: Within nine months after a reexamination, the same opponent can file objections and make additional claims after the grant or re-issuance of a patent or following the conclusion of any post-grant review. Challengers not required to identify themselves (Sect 18) Establishes a special "Transitional Program for Covered Business Method Patents. Creates special class of patents in financial services field subject to their own distinctive post-grant review.

14 How Post Grant Review Increases Investor Risk Even after USPTO re-affirms validity of patent, violator can mount consecutive claims - endlessly keeping new technology from the market. Weakens small companies when revenue & investment capital used for legal fees, not jobs. Increases legal tools for well funded incumbents to attack a competitive threat and to delay potential liability on damages for infringing. Creates special provision for banks and other financial services companies to allow them to avoid paying for infringing use. Reduces investor confidence if Congress alters USPTO patents already awarded even when rulings are backed by the courts.

15 How Fee Diversion Increases Investor Risk Less money to review patents creates greater patent back log. (Investors invest in patents not patents pending.) Legal uncertainties results in companies having to file everything and anything, instead of a few key patents. Increase in backlog delays the granting of patents. Overworked examiners rush to examine and grant when proposed changes rely even more heavily on examiners getting it right in the first place.

16 Result Enables well funded multinational corporations to increase use of legal tactics: To stall new technology To crush budding competitors To make start-ups sell early - and cheap To avoid paying licensing fees or other costs of using someone else s technology

17 Headlines on Patent Wars Apple, Samsung, Google, Nokia and others battling over back-and-forth claims that smartphones and wireless tablets infringe each others' U.S. patents. Recent Patent Grabs Prepare For Patent Reform Google buys Motorola Mobility Patents Microsoft grabs Android Patent Apple buys Sprint & Patents from Freescale Those with the most patents can more easily accuse others of violating them!

18 Company With Most Toys Wins

19 When elephants fight, it is the grass that suffers

20 Remember when we used to MAKE things in this country?

21 YEAR 2020 Replaced by: Remember when we used to INVENT things in this country?

22 INNOVAPORATION To convert or change American ingenuity and intellectual capital into vapor. A reduction in the farm team for innovation.

23 Most problems begin as solutions

24

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