For Reference€¦ · –enough care is not taken in their development to maximize the chances that they will block competitors, e.g., no business strategy; and –enough thought

FINNEGAN | Strategic Patent Filings1

**** For Reference ****

Strategies for Effective and Cost Efficient Global Patent Prosecution

Identifying which innovations should be patented and where can be a difficult task to undertake. The presenters will provide an overview of what is considered patentable in the United States, Europe, Japan and China, and provide practical tips on developing a robust patent program.


Strategies for Effective and Cost

Efficient Global Patent Prosecution

Louis M. Troilo and Clara N. Jimenez

IFAI EXPO, Dallas, TX October 15-17, 2018



What is Patent Strategy

• There is a difference between having

patents and having a patent strategy.

• A patent strategy is a plan to use patents to

advance a company’s business goals.

• Often, companies develop a portfolio of

patents, with no clear goal in mind other than

to say “we have a patent on that.”


Why Do We Care? - $$


The Biggest Problem Facing Patent Owners is …

Worthless patents.

http://www.google.com/url?sa=i&rct=j&q=&esrc=s&source=images&cd=&ved=0ahUKEwifseuU5PXLAhXBQiYKHbidB9sQjRwIBw&url=http://dnn.dromgjf.top/c/empty-pockets-monopoly/&psig=AFQjCNH3vsR3aTXCPsAN7mwO9MrcmQhqjg&ust=1459886765392748


How Big a Problem is It?

• Analysts agree: 95%-97% of patents are

worthless.

• Not because patents are inherently

worthless, but because:

– enough care is not taken in their development to

maximize the chances that they will block

competitors, e.g., no business strategy; and

– enough thought is not given to where to seek

protection, e.g., no global strategy.


The task of preparing a U.S. patent applicationdisclosure is not an easy one:

"There are few, if any, legal documents moredifficult to craft, more fraught with pitfalls thanpatent applications[.]”

Circuit Judge Newman dissenting in Energizer Holdings, Inc. v. International Trade Commission, 2008 WL 1791980, *10 (Fed. Cir. April 21, 2008) (not published).

All Patents Are Not Created Equal


An Issued Patent Is Just the “Tip of The Iceberg”

Many Variables Can Change the Worth of a Patent


The Lighter Side of Patent Valuation

“Valuing patents isn’t rocket science. It is

actually much more difficult.”

© Copyright 2011 | IncreMental Advantage LLC


• Unsystematic portfolio development often

fails to add real value.

• Planned portfolio development

– Protects revenue streams

– Blocks competitors from not only copying your

specific product, but from offering an acceptable

competing product

– Adds perceptible investor value

Value Added by Adopting a Patent Strategy


What is a patent strategy?

Patents are business tools. In

patent strategy, each proposed

patent is tested before it is filed

to determine if it is likelihood of

blocking competition. If it doesn’t

meet the criteria, money is not

wasted on that patent.

Applying a similar level of discipline as applied to strategic decisions

about finance, product development, R&D, marketing, etc.


Title

Inventor’s names

Serial number

Abstract

Filing date

Issue date

13

Owner


TitleSpecification


Claims


What are investors looking for?

1) Valuable technology

2) Quality IP that prevents others

from taking the valuable

technology

3) No clouds over ownership

4) Freedom to operate in

commercially valuable regions

5) No adverse written admissions


Recipe for Good Patents

Blocking claims

+

Avoids prior art

+

Non-restrictive technical description

+

Non-restrictive patenting process

+

Compliance with dozens of rules


Recipe for Good Patent Strategy

• Marketing driven approach

• Patent technical features you expect that

your competitors will need.

• Target claims to your revenue streams.

• Target countries or regions that are most

commercially significant.

• Take advantage of international laws

and treaties for cost effective

prosecution


Market Driven Approach

• Patent the features you

expect to tout in the market

to distinguish your invention

• What do you tell investors?

• What do you tell prospective

customers?

• What will customers

demand?– Motorola Mobility/Google example


Know Your Competition

Patent the technical features you expect that

your competitors will need

Points of criticality, not simply nice to have features.


Target claims to your revenue streams

• Which infringers are going to

damage your company the

most?

• The companies who sell and

distribute infringing products?

• Individuals who use the

infringing products?

• What are the quantifiable

damages for each?


The Patent Life-Cycle - Strategies

• Pre-filing and drafting strategies

– where and when to file

– drafting for multiple jurisdictions, eligible subject

matter

– assigning inventorship

• Prosecution strategy: speed and efficiency

– priority and the PCT system

– expediting examination

• Prosecuting with an eye to the future

– ability to amend after grant

– enforceability and proving infringement


Pre-Filing and Drafting Strategies

• Where to file

• Drafting for multiple jurisdictions

– Different claim types and formats

– Eligible subject matter

– Drafting to allow for future amendment

• When to file

– How much data to include

• Assigning Inventorship


Where to File?

• Where will the invention be made?

• Where will the invention be marketed?

• Where are potential infringers located?

• Are the inventions patent eligible in a given

country?

• Ease of prosecution

• Cost


Drafting for Multiple Jurisdictions

• Consider multiple claim categories –

different countries will allow different claim

types

– product

– intermediate

– composition

– process

– method

– use

– purpose-limited product

– product by process


Who? What? Where?

Patents in the Textile Industry

Going back 4 years, let’s look at:

• the types of patents being

filed,

• who is filing them, and

• where they are being filed.


Textile Industry - What is being patented? Breakdown by Technology Cluster

Understand what the market is doing


Textile Industry – Who is getting patents?Textile Patent Breakdown by Assignee

Understand who’s your competition


Textile Industry – Who is getting patents?Apple’s Textile Patent Portfolio

Understand who is your competitor?


Textile Industry – Where are patents being filed?

Understand where’s your competition


Advantageous Use of International Offices

Using the right foreign office as a platform

to start international prosecution

• Goal is expedited examination to embrace

prosecution

• Leveraging those foreign offices that are

favorable to expedited examination, e.g.

Australia, Canada, EP


Advantageous Use of International System

Patent Prosecution Highway (PPH)

• The PPH is a set of initiatives for providing

accelerated patent prosecution procedures

by sharing information between some patent

offices.

• Permits each participating patent office to

benefit from the work previously done by the

other patent office

• Coordinate international strategy


Concluding Thoughts

• Ask the right questions

• Apply the right strategy

• Leverage the right tools


Speaker InformationLouis Troilo([email protected]/1.202.408.4246)

• Represents Fortune 100 companies to startups and

universities looking for assistance in patent procurement,

portfolio analysis, opinion drafting, and intellectual

property licensing.

• Former patent examiner and material science technical

expertise, have allowed Lou to lecture around the world

on the business value of obtaining and protecting IP

Clara N. Jimenez([email protected]/1.202.408.4253)

• Extensive experience in chemicals and related

applications, including catalysts, polymers, printing inks,

nanomaterials, composites, and industrial manufacturing

• Focuses her practice on various aspect of intellectual

property protection for clients in the chemical and

material science industries, including patent prosecution,

counseling and litigation


DisclaimerThese materials are public information and have been prepared solely

for educational and entertainment purposes to contribute to the

understanding of U.S. intellectual property law. These materials reflect

only the personal views of the authors and are not a source of legal

advice. It is understood that each case is fact specific, and that the

appropriate solution in any case will vary. Therefore, these materials

may or may not be relevant to any particular situation. Thus, the

authors and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

cannot be bound either philosophically or as representatives of their

various present and future clients to the comments expressed in these

materials. The presentation of these materials does not establish any

form of attorney-client relationship with the authors or Finnegan,

Henderson, Farabow, Garrett & Dunner, LLP. While every attempt was

made to ensure that these materials are accurate, errors or omissions

may be contained therein, for which any liability is disclaimed.


Thank You!

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For Reference€¦ · –enough care is not taken in their development to maximize the chances that they will block competitors, e.g., no business strategy; and –enough thought