1. IP Presentation Highland Capital Partners Roundtable Steven
J. Frank, Partner Goodwin Procter August 2, 2007 2007 Goodwin
ProcterLLP
2. About Goodwin Procter
Over 750 attorneys in Boston, Los Angeles, New York, Palo Alto,
San Diego, San Francisco, Washington, D.C.
Nationally recognized expertise representing technology and
life sciences companies, financial services companies, as well as
private equity and venture capital firms
Nationally recognized expertise in intellectual property,
products liability, FDA, commercial litigation, real estate and
business law
3. Rankings & Recognition
NATIONAL RECOGNITIONin Chambers 2007 in the areas of
Intellectual Property, Litigation, Financial Services, Life
Sciences; Private Equity: Buyouts & Venture Capital Investment;
and REITs
ONE OF THE TOPIP defense firms(IP Law & Business)
ONE OF THE TOP 10firms for superior Client Service ( BTI Power
Rankings )
RANKED 2 NDIN THE NATIONin technology support among the AmLaw
200(American Lawyer Tech Scorecard)
Ranked in theGUIDE TO THE WORLDS LEADING EXPERTSin Trademark
Law and The Top 50 Trademark Attorneys
4. Representative IP Clients 5. The Basics
What is IP
and
Why do I care?
6. Protection mechanisms for technology
Patents
Protect
Machines
Processes
Chemical compositions
almost anything you can think of
Independent development is no defense to infringement
7. Protection mechanisms for technology (contd)
Copyright
Protects
Lots of stuff, but in terms of technology, primary relevance is
software
Limitations
Narrowly applied
Doesnt exclude independent development
8. Protection mechanisms for technology (contd)
Trade Secrets
Courts help those who help themselves
Need to take steps to maintain secrecy
Courts are concerned with unfair competition, not technology
protection
Must be something inventive (relatively high bar) and useful
(relatively low bar)
Must not have been publicly disclosed more than one year ago
(for US patents)
Who is the inventor?
A patent does not guarantee that you can actually practice the
invention
Will take a long time (~4 years) and cost a lot of money
(~$15,000)
10. Why Does Anyone Care?
Wall out Competitors
Defense
Potential Income
Value on Exit
Credibility to Investors
Articulated Description of Market Differentiation
11. Avoiding Common Pitfalls
Work on your own time and equipment
Understand your current obligations
Document contributions from others
Document code provenance
Get assignments
File something before you launch (provisionals)
Do some searching
Focus on the product, not patents
12. Provisional Full PatentApplication and (maybe) International
(PCT) Application Non-Public Disclosure Tinkering Public Disclosure
Patent Pending 1 Year Foreign Patent Filings 18 Months
Provisionals generally cost between $1,000 and $5,000
Full applications generally cost between $8,000 and
$15,000
Strive for high reuse between provisional and full
application
PCT applications cost approximately $4-5,000 almost all
official fees
Foreign applications cost between $3,000 (AU, CA) and $15,000
(EP and Japan)
One well-drafted application can often lead to numerous issued
patents
13. Possible Changes
Accelerated Examination
Peer Review
Post-Grant Opposition
Changes to Continuation Practice
First-to-file
14. IP Presentation Highland Capital Partners Roundtable Steven
J. Frank, Partner Goodwin Procter August 2, 2007 2007 Goodwin
ProcterLLP
