UW IP Management Certificate Program Patent Lecture 1

UW IP Management Certificate Program Patent Lecture #1 “Patents from the Outside” James Robarts Excelsior Bonifico Company jimro@ebcompany. com www. ebcompany. com

Speaker Introduction • • 26 yrs 15 yrs 9 yrs 7 yrs Engineer Inventor Consulting IP Strategist Patent Process Instructor • yrs Not an Attorney 2

Material Format Objectives • • Conceptual framework Shared vocabulary Familiarity in basics Best practices Topics • Lecture #1 – Patents from the Outside • Lecture #2 – Patents from the Inside • Lecture #3 – Patent Valuation Process • • Structured lecture slides for breadth Case study for some depth Overnight exercise for patent search practice Myth busting for emphasis & interest 3

Lecture #1 Topic Order A) Intellectual Property Redefinition B) Patenting Process Case Study – Introduction C) Infringement D) Portfolio Analysis Case Study – Filing Dates E) USPTO Searches Case Study – Prior Art Searches F) Prior Art Search Exercise 4

A) Intellectual Property from the Outside IP is an intangible asset that is: • • • Legally defined Available in four forms, each with dedicated laws Expensive Speculative Highly leverageable Market Exclusivity Revenue Partnerships Reputation Being pursued by your competitors 5

A) IP Terminology Intellectual = product of human imagination, study, or effort Property = something you have legal claim to/control over Intellectual Property = information owned/controlled by the firm Title to Real Property = • Court recognized documents specifying property & ownership • Document filing maintained by government • Documents include property specification: w/boundaries, contents, & limitations Title to Intellectual Property = Same as Real 6

A) IP Types & Uses Trademarks Title to product/service ID Customer knows source of product/service Copyrights Restricts copying creative works Compensation for creative effort Trade Secrets Restriction on disclosing proprietary info Preserve business advantage, allow movement of workers Patents Temporary limited monopoly in exchange for public disclosure Compensation for investment in innovation UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 7

A) Patent Types Utility Process, machine, article of manufacture, composition of matter, improvements thereof Design Ornamentation Plants Asexually reproducible plant UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 8

A) Patent = Government Grant of Property Rights Limited Monopoly for Disclosure of New, Non-obvious & Useful invention In exchange teaching others how an invention works, description sufficient to teach a person skilled in the same field how to make/perform invention an inventor can receive from the gov the right to deny use of invention to others "the right to exclude others from making, using, offering for sale, or selling" the invention in USA or importing the invention into USA for twenty years from request for monopoly UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 9

A) Exclusionary Rights are Powerful Denial of market to competitors You betcha Licensing revenue That would be great Infringement insurance Especially among mature technology product firms Freedom to operate No guarantee of product non-infringement Other forms of public discloser limits others from patenting Partnership Leverage Often the deal impetus FUD/Cachet Perhaps UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 10

B) Patent Process – Almost Really Simplified § Have a valuable innovation • Identify problem of economic value • Identify a novel solution to problem § Document & witness the solution § Characterize/analyze how solution relates to • Technical field – prior art • Industry – application of solution • Business goals – what is the value extraction plan § § § Prioritize solutions within a budget Prepare patent disclosure and claims File application w/USPTO, Wait until USPTO examination Negotiate claims w/USPTO Pay periodic fees Mark your products UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 11

B) US Legal Bars § Actual invention Priority (invention vs. filing dates) Prior art § Patentable New Useful Unobvious § Documentation § Fees § Expiration UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 12

B) Interference & Diligence Inventor A Application Filed Invention Conception Inventor Diligence Invention Conception Inventor B 2000 UW IP – Spring ‘ 06 ’ 01 ’ 02 Copyrights © Excelsior ’ 03 Application Filed 18’ 04 months Bonifico Company Application Published ’ 05 ‘ 06 13

Case Study – Introduction § Throughout the 90’s Apple seeks to extend their brand to portable computing devices The Newton first offered in ’ 93, discontinued in ’ 99 after failure to capture significant share of emergent PDA market § Jobs narrows research focus to “information appliance” “…digital pocket Walkman” § 2000 Creative Technology ships Zen portable music player § 2001 Apple introduces the i. Pod UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 14

Case Study – Oct 2001 Creative Technology Zen Ship Apple 2000 UW IP – Spring ‘ 06 i. Pod Ship ’ 01 1 year ’ 02 Copyrights © Excelsior ’ 03 ’ 04 Bonifico Company ’ 05 ‘ 06 15

C) Patent Infringement – Definition § § Trespass on IP rights Claim of infringement is a federal case Patent “claims” define property boundaries Literal infringement A claim clearly describes infringing product/process § Doctrine of Equivalents Infringement can extend beyond literal description UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 16

C) Patent Infringement – Practice Patent infringement cases are • • Expensive Slow Internally distracting Externally destabilizing Managed by attorneys… • Regardless of who is accusing • Any opinion of infringement or interpretation of claims is potentially court evidence • Many subtle legal strategies …who rely on biz managers for priorities …and technologists to explain the innovation and its field • Inventor obligation of patent support typically survives employment period UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 17

C) Patents – Intersection of Three Disciplines Business Company/product strategy Investment priority Law Technology Title Licenses Infringement UW IP – Spring ‘ 06 Knowledge of Field Innovations Copyrights © Excelsior Bonifico Company 18

D) Relationships between Patents § § Patents have inter & intra-company relationships Both types have tech, legal, and business aspects Patents explicitly reference some of these aspects Intra-company References to other applications (included material, inherited priority dates) § Inter-company Prior art references Citation Trees UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 19

D) Analysis Tools – Tech/Benefit Matrix As non-attorneys our patent strategy focus is the relationship between technology & business UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 20

4/6 D) Analysis Tools – Value Chain Elements PROCESS ELEMENTS ENGINEERING ASSY TEST CONTROLLER L 4 V 6 V 8 PRODUCTS VALVETRAIN BLOCK SUBSYSTEMS UW IP – Spring ‘ 06 Copyrights © Excelsior Figure 1. http: //mitsloan. mit. edu/research/clockspeed/Fine. Value. Chain. doc July 2001, Submitted to Sloan Management Review by 21 Bonifico Company Fine, Vardan, Pethick, El-Hout

D) Analysis Tools – Tech/Feature/Benefit Matrix Benefits Efficiency Product Automatic Accelerated Elimination of Features Event Data Logging Collection Redundancy Innovation C Innovation B Innovation A Claims vs. Benefits UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 22

D) Analysis Tools – Opportunity Prioritization Market (Years) Risks Overall Required Density Investment Technology of Prior Opportunity <3 3 -5 >5 Technical Innovation Investment Dependencies Art A B C 1 2 2 1 5 2 2 4 1 1 5 1 2 3 2 1 -4 2 0 Weighting 1=low, 5=high UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 23

Case Study – July-Oct 2002 Creative Technology Non-provisional Filed Product Ship Apple 2000 UW IP – Spring ‘ 06 Patent Publish Product Ship ’ 01 Provisional Filed 18 months 1 year ’ 02 Copyrights © Excelsior ’ 03 ’ 04 Bonifico Company ’ 05 ‘ 06 24

E) How Much Searching is Appropriate? “Don’t look, you’ll just find stuff that will narrow the claims” “Knowledge is Power” “It’ll cost more to find out later” • • • Can this be patented? Do we need to dance around something? Can we use this in our application? Better learn about this now before more investment If it’s in our IDS, it’s harder to use against us later UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 25

E) Search Responsibilities & Phases Search Responsibilities • Inventor • Business Management • Attorney Product Proposal Phase – obvious conflicts • Competitors have prior art? • Expected technologies have prior art? Feasibility Phase – any conflicts • Prior art (including defensive publication) • Licenses Later Phases – new conflicts • Recent publications (patents & field journals/proceedings) • Products & press releases UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 26

E) US Patent Search Engines US Patent & Trademark Office www. USPTO. gov Thomson Delphion IP Network www. Delphion. com Internet www. google. com Lots of others, google “patent searches” UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 27

E) Field Codes UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 28

E) Typical USPTO Search Fields Abstract – /abst Categories – /ccl Dates People & Companies – /in, /an Patent references Disclosure, /spec Title, /ttl UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 29

E) Utility Patent Categories Process • Process, act, or method of transformation • New application of a previously disclosed utility invention Machine • Makes stuff Manufacture • Stuff made Composition of Matter • Chemical compositions; new chemical compounds or combinations of compounds UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 30

E) Multiple Categories Inventions often have multiple facets • Chemical Invention Composition of Matter New compound Process Method of making compound Method of using compound for specific purpose • Mechanical Invention Machine Computer-based apparatus for processing data Process Method for processing data UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 31

Case Study – Oct 2002 Creative Technology Non-provisional Filed Product Ship Apple 2000 UW IP – Spring ‘ 06 Product Ship ’ 01 Provisional Filed ’ 02 Copyrights © Excelsior Non-provisional Filed ’ 03 ’ 04 Bonifico Company ’ 05 ‘ 06 32

Case Study – Finding Prior Art Five Patents are of particular interest Creative Technology Claims Apple infringes on one of their patents USPTO rejects Apple patent Citing a Microsoft application Three patents found by patent examiners to be relevant to both Apple and Creative Technology applications UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 33

F) Class Exercise Let’s consider how to find the four remaining patents of interest • Source of Apple Rejection Microsoft – Platt 2003/0221541 • Three patents relevant to both Apple and Creative Technology patents Cluts 5, 616, 876 Dwek 6, 248, 946 Yamasura 5, 918, 303 After your individual searches, we will • Compare strategy/results with team • Teams report to class UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 34

US Patent Pendency UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 35

Patent Value Timeline UW IP – Spring ‘ 06 Copyrights © Excelsior Bonifico Company 36

Citation Tree 37