Programs for Academic and. Research Institutions
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1 Programs for Academic and Research Institutions
2 Awards & Recognition #1 for Patent Litigation Corporate Counsel, IP Litigation Department of the Year Finalist The American Lawyer, 2014 IP Litigation Law Firm of the Year U.S. News Best Lawyers, 2014 Recipient of Top Tier 1 Rankings in Every National U.S. Category Managing Intellectual Property, Intellectual Property Practice Group of the Year Law360, 2013 Top National Rankings for Patent Litigation and Patent Prosecution Practices IAM Patent 1000: The World s Leading Patent Practitioners, 2013 Top Tier 1 National Rankings in Patent Litigation and Patent Prosecution The Legal 500, 2013 Named to Intellectual Property Hot List National Law Journal,
3 Patent Enforcement: Licensing and Litigation Companies frequently use technology developed and patented by academic and research institutions without first entering into a licensing agreement. As a result, the institution loses revenue and fails to be recognized for its inventive contribution. Due to the lack of financial and legal resources necessary to pursue legal action, these institutions have little recourse against infringing companies. Fish has a long and proud tradition of successfully enforcing patents for academic and research institutions. We offer a variety of alternative fee options for enforcement, including arrangements where Fish covers all legal fees and costs to pursue licensing and litigation, where necessary. These arrangements provide an opportunity for institutions to recover lost revenue by enforcing their patent rights without financial risk. How It Works For academic and research institutions that have an interest in enforcing their patent rights, the process begins by contacting Fish and providing basic information, such as the patent(s) and the names of the companies that may be using the patented technology without permission. At that point, Fish will conduct a preliminary assessment of the matter without any obligation (financial or otherwise) from the institution. If the matter is suitable for enforcement, Fish will then enter into an engagement agreement with the institution. Next, Fish will perform a more in-depth review of the matter and develop enforcement options for consideration. Fish will then implement the strategy authorized by the institution. In many cases, Fish will be able to resolve the dispute through licensing discussions. Sometimes, however, these attempts for an amicable resolution fail and litigation is necessary. Fish has handled more patent litigation each year than any other firm for the past decade. Should litigation ensue, Fish has the experience to achieve a great result for your institution. Our record speaks for itself. Fish handled 220 patent litigation cases in 2012, more than double the number of any other firm. We consistently win the largest, most important, and most technically sophisticated cases. This is why more Fortune 100 companies in the world trust Fish over any other firm to handle IP litigation matters worth billions of dollars. Corporate Counsel, November 2013 Post-Grant Practice > Post-grant review has quickly become an important aspect of any patent enforcement effort. Companies accused of patent infringement frequently use post-grant review to challenge the patent s validity during litigation. Fish is a leader in handling post-grant proceedings. Your engagement with Fish will include these services at no additional cost. > Fish has the most active post-grant practice in the world for both petitioner and patent owner, representing patent owners in 53 proceedings and petitioners in 61 proceedings as of April 2014.
4 With a proven track record, the partnership between Fish & Richardson and Bastille, LLC the Bastille Program has successfully commercialized academic and research institutions patents through the following unique programs that quickly and efficiently capture revenue. Patent Prosecution and Commercialization When a promising technology comes along that has significant commercial potential, why treat it like every other new invention disclosure? You shouldn t. Budget constraints, however, often make it difficult to justify spending the funds necessary to obtain comprehensive, high-quality patent protection in the U.S. and appropriate global markets. Fish & Richardson and Bastille, LLC, have partnered in an unrivaled program for patent prosecution and commercialization. The Bastille Program shifts the paradigm from paying fees and expenses to a risk-sharing model. We invest in your intellectual property (IP) and share in the revenue generated. We significantly enhance the value of your technology by obtaining the highest-quality patents in key global markets. Your institution always retains ownership of the patents generated by the Program and is never at financial risk. If we successfully commercialize your technology, we both financially benefit; if we are not successful, your institution has no financial exposure but retains first-rate IP. How It Works Fish and Bastille start the process by assessing the patentability and commercial potential of your technology. We will consider technologies at any stage but preferably just after the invention disclosure. We will not accept a technology unless we see a clear path to a commercial market. If the technology is appropriate for the program, we will formalize the relationship in one of two ways. Under one approach, Bastille enters into an exclusive license with your institution for the technology, and Bastille will then engage Fish for patent prosecution. The other approach involves two agreements for your institution one with Fish and another with Bastille. Under either arrangement, Fish and Bastille assume all the financial responsibility for the patent portfolio at the start of the engagement. Next, Fish drafts a patent application to meet your institution s scientific goals and Bastille s commercial strategy. If an international patent application (PCT) or further U.S. applications will enhance the technology s value, we will file those applications as well. We invest heavily on the front end to enhance the value of your technology. After the applications are filed, Bastille works with you to optimize the business strategy for your technology. Fish and Bastille collaborate closely throughout the entire process, using our combined resources and insight to generate significant revenue streams for our clients. Patent Prosecution > More than 5,000 U.S. Patents Filed in 2013 > More than 3,200 Foreign Patents Filed in 2013 > 3,102 U.S. Patents Issued in 2013 > 1,786 Foreign Patents Issued in 2013
5 Patent Portfolio Mining Many academic and research institutions have developed robust patent portfolios that cover a variety of technologies. The maintenance fees alone associated with these portfolios represent a significant financial investment. Despite this investment, many institutions lack the personnel to periodically evaluate these technologies for commercialization. Because of this, each year hundreds of valuable technologies owned by academic and research institutions languish. Fish and Bastille have developed an unparalleled portfolio mining program to evaluate mature patents and unearth hidden gems. We have found that many technologies gain broad acceptance in the commercial markets five, 10, or 15 years after they are granted. Unlike other programs that involve unreliable software evaluation, the Bastille Program has subject matter experts who review each patent individually to assess its commercial potential. Value With No Financial Risk Our patent mining program is a win/win for your institution. Under the program, we spend considerable time reviewing patents individually to: Determine whether the patents cover products or services offered in the U.S. (and in global markets, if you have foreign counterparts) Assess whether a patented technology could apply to products or services as we see the market evolving Identify patents that no longer have commercial application and should be considered for abandonment because the markets have embraced different technologies As in all our programs, your institution remains the patent owner and is never charged for our patent mining service. Instead, we are compensated only if we uncover a valuable technology and successfully commercialize it. How It Works You formalize the relationship by entering into two agreements one with Fish and another with Bastille. These agreements provide that your institution has no financial responsibility for our patent mining services, but that your institution will work with the Bastille Program to commercialize the valuable technologies we uncover. Next, you propose a group of patents for review. The selection of these patents is entirely up to you. We then go to work analyzing each patent. When we find a hidden gem, we create a commercialization strategy for your review and approval. Our strategy is tailored to optimize the value of your technology, and we have the resources and expertise to deliver top-quality results. Your institution retains control throughout the entire process, and we work with you to make sure our strategies align with your goals. Strength in Numbers > More than 300 of our attorneys have advanced degrees in science or technology. Add to that the 75 PhDs on our staff, and you get a law firm with unmatched expertise in virtually every technology area.
6 William Woodford, Fish & Richardson J. Patrick Finn III, Ph.D., Fish & Richardson Brad Larschan, Bastille, LLC Fish & Richardson is a global patent and intellectual property (IP) litigation law firm with more than 400 attorneys and technology specialists across the U.S. and Europe. Fish has been named the #1 patent litigation firm in the U.S. for 10 consecutive years. Fish has been winning cases worth billions in controversy often by making new law for the most innovative clients and influential industry leaders since For more information, visit Bastille, LLC, is a global IP development and commercialization company with academic and research institution clients all over the world. Bastille s goals are to assist with the development and commercialization of technology that improves the way people live, work, and play, and to return fair value to the institutions that create these technologies. The Bastille Program s IP development and commercialization significantly enhance the value of clients technologies, and Bastille s expertise enables the firm to deliver more commercialization opportunities and revenue to its clients. For more information, please visit fr.com Atlanta Austin Boston Dallas Delaware Houston Munich New York Silicon Valley Southern California Twin Cities Washington, DC These materials may be considered advertising for legal services under the laws and rules of professional conduct of the jurisdictions in which we practice. The material contained in this brochure has been gathered by the lawyers at Fish & Richardson P.C. for informational purposes only and is not intended to be legal advice. Transmission is not intended to create and receipt does not establish an attorney-client relationship. Legal advice of any nature should be sought from legal counsel Fish & Richardson P.C. All Rights Reserved. Document No. BP-0100
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