Ways to Maximize Your Intellectual Property Assets

Transcription

1 Ways to Maximize Your Intellectual Property Assets David B. Cupar, Esq. Member McDonald Hopkins LLC Asset Maximization Protecting Diagnostic Technology Commercializing Diagnostic Technology Theme for today s talk: ACT FAST 1

2 Patent Rights The U.S. Patent and Trademark Office awards your company with a key patent. Patent Rights The U.S. Patent and Trademark Office awards your company with a key patent. True or False: With that patent, your company has the right to make, use, or sell that patented technology 2

3 Patent Rights The U.S. Patent and Trademark Office awards your company with a key patent. True or False: With that patent, your company has the right to make, use, or sell that patented technology False Patent Rights Patents are an exclusionary right to preclude others from making, using, selling or importing but gives you no affirmative rights (other than to enforce the patent). 3

4 Patent Rights Make sure you obtain appropriate licenses (or appropriate non-infringement, invalidity or non-enforceability opinions) to be able to use your own patented technology. Patent Timing Know when to file a patent application Three months ago, your research paper identifying a new technique for early detection of prion-based diseases published. You are now seeking patent protection. 4

5 Patent Timing Question 1: Can you file a patent application and receive patent protection in the United States? Patent Timing Question 1: Can you file a patent application and receive patent protection in the United States? Answer: Yes. 5

6 Patent Timing In the United States, you have a one-year grace period from the time you first publicly disclose, use, offer for sale, or sell your invention to file a patent application. Patent Timing Question 2: Can you file a patent application and receive patent protection outside the United States? 6

7 Patent Timing Question 2: Can you file a patent application and receive patent protection outside the United States? Answer: Generally no (Canada is the exception). Patent Timing Most foreign countries require you to file your patent application prior to publicly disclosing, using offering for sale, or selling your technology. 7

8 Patent Timing Prior offers for sale, disclosure, and use is one of the most overlooked issues in the sale or licensing of intellectual property assets if you are buying or seeking a license, ask! Creating a Patent Portfolio Use invention disclosure forms Put together a team to review invention disclosure forms and determine commercial viability. Provisional versus utility application International patent portfolio 8

9 Provisional vs. Utility Patent Provisional Are not examined Provisional vs. Utility Patent Provisional Are not examined Hold place in line for up to one year before a utility must be filed. 9

10 Provisional vs. Utility Patent Provisional Are not examined Hold place in line for up to one year before a utility must be filed. Less expensive up front than preparing a utility Provisional vs. Utility Patent Provisional Are not examined. Hold place in line for up to one year before a utility must be filed. Less expensive up front than preparing a utility. However, no issuance from a provisional. 10

11 Provisional vs. Utility Patent Utility Examined Provisional vs. Utility Patent Utility Examined. Generally, a higher up front cost. 11

12 Provisional vs. Utility Patent Utility Examined. Generally, a higher up front cost. Issues into a utility patent. Provisional vs. Utility Patent Should you file a provisional or utility application? Likelihood of commerciability 12

13 Provisional vs. Utility Patent Should you file a provisional or utility application? Likelihood of commerciability Timing of bringing the technology to market Provisional vs. Utility Patent Should you file a provisional or utility application? Likelihood of commerciability Timing of bringing the technology to market Cost 13

14 Provisional vs. Utility Patent Should you file a provisional or utility application? Provisional applications make the most sense when you have a fast approaching public use, disclosure or offer for sale and you want to protect your foreign patent rights Provisional vs. Utility Patent Question: Can you file a patent infringement lawsuit on a patent application? 14

15 Provisional vs. Utility Patent Question: Can you file a patent infringement lawsuit on a patent application? Answer: No Courts have subject matter jurisdiction only on issued patents. Provisional vs. Utility Patent Should you file a provisional or utility application? Caveat provisional applications can actually slow down the time until issuance so, while you have up to a year, you should file your utility application as soon as possible. 15

16 Provisional vs. Utility Patent Bottom line get your applications issued as quickly as possible to maximize their commercial value. International Patent Strategy You have a patent portfolio on valuable diagnostic technology. Alpha Company approaches you for an exclusive North American license for a specific application of that technology. 16

17 International Patent Strategy True or False Question: North America is Canada, the United States, and Mexico. International Patent Strategy True or False Question: North America is Canada, the United States, and Mexico. FALSE North America extends to the Southern border of Panama. 17

18 International Patent Strategy True or False Question: North America is Canada, the United States, and Mexico. FALSE North America extends to the Southern border of Panama. Moral: know your geography International Patent Strategy True or False Question: North America is Canada, the United States, and Mexico. FALSE North America extends to the Southern border of Panama. Moral: know your geography (or better yet the licensing terms you are entering) 18

19 International Patent Strategy Which countries to file in Large existing market. International Patent Strategy Which countries to file in Large existing market. Desire to expand into that country potential market. 19

20 International Patent Strategy Which countries to file in Large existing market. Desire to expand into that country potential market. License another entity in that country. International Patent Strategy Which countries to file in Large existing market. Desire to expand into that country potential market. License another entity in that country. Desire to prevent competitor from practicing the claimed invention in that country. 20

21 International Patent Strategy When To File In Foreign Countries Within one year of U.S. filing date (or earliest filed patent application). International Patent Strategy Filing Options Direct national filings in individual country(ies). 21

22 International Patent Strategy Filing Options Filing in European Patent Office (EPO) designate up to 31 European countries in a single EPO filing. Prosecutes to a European Patent. Followed by registration in each individual European country desired. International Patent Strategy Filing Options Patent Cooperation Treaty (PCT) filing: may designate most every industrialized nation (exception: Taiwan) 22

23 What s the big deal? Patent Marking What s the big deal? Patent Marking You can lose out on monetary damages if you do not mark. 23

24 What s the big deal? Patent Marking You can lose out on monetary damages if you do not mark. If you do not mark your monetary damages will start after you provide the infringer actual notice. Patent Marking Mark your product with the appropriate patents If you cannot mark directly on the product, mark on the container or packaging. 24

25 Patent Marking What if your patent claims are only method claims? Patent Marking What if your patent claims are only method claims? You are not required to mark a product with a patent that solely has method claims. 25

26 Patent Marking What if your patent recites method and product claims? Patent Marking What if your patent recites method and product claims? You are required to mark. 26

27 Patent Marking Marking and Licensing A commonly overlooked provision in a license. Patent Marking Marking and Licensing A commonly overlooked provision in a license. Require your licensees to mark. 27

28 Conclusion File patent applications early and often Make your counsel push them as quickly as possible to issuance to maximize their value Think globally (and know your geography!) Mark your products For questions or further information, please contact: David B. Cupar, Esq. McDonald Hopkins LLC 600 Superior Avenue, East Suite 2100 Cleveland, Ohio (phone) (fax) ( ) (web) 28