NAPP Presentation

8/7/2019 NAPP Presentation

http://slidepdf.com/reader/full/napp-presentation 1/22

Jackie Hutter, MS, JDDecatur, GA

404-797-8124

www.HutterGroup.com www.PatentMatchMaker.com

www.ipAssetMaximizerBlog.comTwitter @ipStrategist



� This presentationreflects my personalexperiences and

opinions about thestate of theprofession.

� You may disagree,--perhaps vehemently,--with my views, buttrust that many othersdo not.

Photo: Flickr/YellowCakeMushroom



� Í got paid ridiculous

amounts of money to

write worthless

patents. They werebulletproof, but

worthless

nonetheless.µ

Photo: Flickr/TractorToe



� 1) Do not anything themarketplace cares about;

OR

� 2) If does cover something with a measureable market,typically too narrow toeffectively preventcompetition;

OR

� 3) Patentee is incapable orunwilling to create valuefrom invention.




� Patent is government

recognition that

invention meets

statutory requirements� USPTO doesn·t care if

invention has

commercial value

Photo: Flickr/mykpwedding



� Many people conflate value of patents to abusiness idea� Do we ´fetishizeµ

patents?� Free market and

business acumen onlythings that determines value

�Í

deas a dime a dozenµ� Patent saleable only if covers a viablebusiness model� BlackBerry® litigation

Photo: Overstock.com



� As a patent practitionerrole is to obtain patents,not give business advice

� Assume client has

established need for one

BUT

� Consider understandingreasons why client is

seeking to obtain patent� Can you afford to steer work away?

� Are there other ways togenerate revenue?

Photo: Flickr/fpSurgeon



� Most inventions are theresult of a desire tosolve a broadly

conceptualizedconsumer need

BUT

� Most patents cover onlya subset(s) of the waysaddress the need

Photo: Flickr/Senór Cohiba



Put simply, too many

patents cover theINVENTION not the

INNO V ATION

Photo: Flickr/the Punk



� Automated paper

towel dispensers

� First broadly

distributed product

� Innovation: Hygienicpaper towel

dispenser

� Invention: Specific

way to addressconsumer need

� Patented invention ´6

ways to Sundayµ

Photo: Georgia-Pacific LLC



� Innovator createdmarket demand� User vs. buyer

� Competition reactedby designing around� Now at least 6 different

options

� Price erosion

� Worse overall forinnovator� Cost of market entry

higher for them

Photo: Georgia-Pacific LLC



� Instead of startingapplication draftingfrom invention, workback to original

problem itself andbroaden from that point� Make sure metes and

bounds of inventionencompass commercial

viability� May not be possible to

obtain full scope, butcan·t get broad scope if

don·t try Photo: Flickr/smkybear



� Existence of patentirrelevant to consumeracceptance of newproduct or technology

� Consumer buys productnot patent

� Commercial successtypically due to� Experience

� Acumen� Relationships� Timing� Luck

Photo: Apple Corporation



� Counsel client thatunlikely that will makemoney from obtaining apatent on an idea she

thinks is valuable� People buy viable businessmodels, not bare ideas

� To enhance success of selling patent rights,target possible acquirers

and frame patent draftingin their terms� ´Don·t be a selfish

patentee.µ

Photo: Flickr/cliff1066



� Consider recommending thatclients test the market beforefiling application

� Most applications filed too early� Few inventors need to preserve ex-N. America filing rights

� Rely on CDA·s and/orexperimental use exception

� Don·t rely on ´skinnyµprovisional filing

� Only as good as what is disclosed

� May seem risky, but businesspeople used to dealing with risk� Í gave conservative advice about

filing dates because it served myinterests.µ

� Education and communication iskey

Photo: Flickr/esoule



� When appropriate

develop an

écosystemµ approach

to patent filing strategy� Identify aspects of

product needed for

market success

� Goal to ´make it cheaper

to go through you thanaround you.µ

� Ex: Product and

packaging

UtilityPatent on

CoreProduct

DesignPatent onProduct

UtilityPatent onPackage

DesignPatent onPackage

UtilityPatent onSpecific

Feature of Product




� Sometimes broad

patent rights not

available

� For´realµ businessideas, consider

counseling to

develop brand equity

� Trademark/trade

dress

Photo: Flickr/mleak



�

Consider counseling client thatthere are other ways to create value than by obtaining a patent

� First Mover Advantagex Sometimes first to market ends up

effectively owning the relevant market,especially when

x Limited distribution opportunities;x Short shelf life; or

x Only enough customers for 1 supplier

� Ride on coat-tails of another patentholderx Strategic alliances, joint venturesx Ex: If supplier has patent to raw material and

you obtain exclusive rights to use in yourproduct, can be almost the same as obtainingown patent

� Commercial relationshipsx Contractual-based market exclusivity

� Many others!x Will be market and product specific

Photo: Flickr/Paul_S_UK



� Patent practice is

changing

� More competition

� Opening of ́ blackboxµ

� Technology advances

� End of ́ glory daysµ of

client deep pockets

Photo: Flickr/AmyMichelle



� The $64K Question

How do I create

and/or maintain apatent practice that

maximizes value

creation

opportunities for me A ND my client?

Photo: Flickr/marco_bellucci



� When you find out

how to create a

mutual value creation

proposition, pleaselet me know!

� Disruptive innovation

is occurring

� IP world will be totally

different in 5 years

� It will be a bumpy ride

Photo: Flickr/ShellSnaps



Documents

NAPP Presentation