Introduction to Patents & other Intellectual Properties (IP) Bijan Tadayon, Ph.D., J.D. Saied Tadayon, Ph.D., J.D. bijantadayon@maxvalueip.com saiedtadayon@maxvalueip.com MaxValueIP LLC 11204 Albermyrtle Road, Potomac, MD 20854 USA Tel. (301) 294-0434 Fax (301) 294-0312 May 7, 2012 Copyright 2012 by MaxValueIP LLC 1
Intellectual Property (IP) = Intangible Patent Process Machine Manufacture Composition of Matter Novel & Non-obvious Copyright Literary, dramatic, musical, choreography Pictorial, graphic, sculpture Audio-visual, Sound recording Architectural Original & Fixed Trade Secrets Trademark Words Customer List Know how Names Marketing M k Plans SymbolsS b l Technology Secret formula Slogan Sounds / Colors Trade dress Commercial Value Derived from Secrecy Use of Mark to Distinguish Goods/Services May 7, 2012 Copyright 2012 by MaxValueIP LLC 2
Protection (against) & Term Patent Making Selling (or offer to sale) Using Importation Copyright Reproduction (copying) Distribution Public Display/Performance Transmission Derivative work 20 years * Life of Author + 70 yr * Trade Secrets Copying, Using, Benefiting, Disclosing BUT: Can NOT prevent back engineering Lost if publically disclosed Others may independently discover Trademark Unfair competition Consumer confusion Importation I t ti (Federal) COVERAGE: State (local) Federal (nationwide) As long as value & secrecy maintained Until use is discontinued or mark becomes generic May 7, 2012 Copyright 2012 by MaxValueIP LLC 3
Allowable Subject Matter Applied Abstract Ideas, Algorithms, Laws of Nature, Mental Steps May be Patentable Utility Not Patentable May 7, 2012 Copyright 2012 by MaxValueIP LLC 4
Anatomy of Patent Application Patent Application Spec (e.g., 20 pages) Abstract Background Summary Detailed description Figures Teachings Enabling Written Best Mode Claims (e.g., 20) Claim 1 Claim 2 Legal force Definite May 7, 2012 Copyright 2012 by MaxValueIP LLC 5
Examples of Claim Scope SPEC Broad Solar panel Spare Tire A moving vehicle comprising: 4 wheels. A moving vehicle comprising: 4 wheels; and a spare tire. 4 wheels Red A moving vehicle comprising: 4 wheels; a spare tire; and a solar panel. Narrow May 7, 2012 Copyright 2012 by MaxValueIP LLC 6
Claim Feature or Element = Limitation in Claim Scope All Vehicles Vehicles with 4 wheels Vehicles with 4 wheels and a spare tire Vehicles with 4 wheels, a spare tire, and a solar panel Vehicles with 4 wheels and a solar panel May 7, 2012 Copyright 2012 by MaxValueIP LLC 7
GOAL: To Avoid Prior Art Using the Largest All Vehicles Possible Claim Scope Vehicles with 4 wheels Too Broad Vehicles with 4 wheels and a spare tire Vehicles with 4 wheels, a spare tire, and a solar panel Too Narrow Good Scope Prior art Vehicles with 4 wheels and a solar panel May 7, 2012 Copyright 2012 by MaxValueIP LLC 8
GOAL: Largest Possible Valid Claim Scope Prior art Invalid Claim Too Broad Infringing i Product/System Too Narrow Nobody Infringes Valid Claim Good Scope May 7, 2012 Copyright 2012 by MaxValueIP LLC 9
Infringement Requires All Claim Limitations All Vehicles Vehicles with 4 wheels Vehicles with 4 wheels and a spare tire Non-infringing g Product/System Vehicles with 4 wheels, a spare tire, and a solar panel Claim Scope Infringing Product/System Vehicles with 4 wheels and a solar panel May 7, 2012 Copyright 2012 by MaxValueIP LLC 10
Unnecessary Scope Limitation SPEC Broad Solar panel Spare Tire A moving vehicle comprising: 4 wheels; and a solar panel. 4 wheels Red A moving vehicle comprising: 4 wheels; red paint; and a solar panel. Narrow May 7, 2012 Copyright 2012 by MaxValueIP LLC 11
Example of Infringement Analysis A moving vehicle comprising: 4 wheels. Met Met Met A moving vehicle comprising: 4 wheels; and a spare tire. No Met Met A moving vehicle comprising: 4 wheels; a spare tire; and a solar panel. No No Met May 7, 2012 Copyright 2012 by MaxValueIP LLC 12
Patent Strategy Startups (critical) Compete with large companies Increase value for investors and potential buyers Large Companies Defensive patents & Cross Licensing Licensing revenue Competitive edge in the market Spin-off May 7, 2012 Copyright 2012 by MaxValueIP LLC 13
Design an IP portfolio Patent Strategy Identify the holes in IP coverage Fill up the holes: file patent applications Identify infringers or potential licensees Injunction market share Licensing revenue low overhead long-term income Increase value in stock market May 7, 2012 Copyright 2012 by MaxValueIP LLC 14
Patent Strategy University Tech Transfer Source of revenue for University & research ROI based on shares in startup licensees Encourage research business opportunities May 7, 2012 Copyright 2012 by MaxValueIP LLC 15
Patent Pooling Limited Licensing Time Location Scope Application Patent Strategy Exclusive License Sale with License back to itself Sale of IP that is no longer needed for cash Auction / private sale May 7, 2012 Copyright 2012 by MaxValueIP LLC 16
Thank You! May 7, 2012 Copyright 2012 by MaxValueIP LLC 17