Ways to Maximize Your
Intellectual Property Assets
David B. Cupar, Esq.
Member
McDonald Hopkins LLC
Asset Maximization
• Protecting Diagnostic Technology
• Commercializing Diagnostic Technology
• Theme for today’s talk: ACT FAST
1
Patent Rights
• The U.S. Patent and Trademark Office
awards your company with a key patent.
Patent Rights
• The U.S. Patent and Trademark Office
awards your company with a key patent.
• True or False: With that patent, your
company has the right to make, use, or sell
that patented technology
2
Patent Rights
• The U.S. Patent and Trademark Office
awards your company with a key patent.
• True or False: With that patent, your
company has the right to make, use, or sell
that patented technology
• False
Patent Rights
• Patents are an exclusionary right to preclude
others from making, using, selling or
importing but gives you no affirmative
rights (other than to enforce the patent).
3
Patent Rights
• Make sure you obtain appropriate licenses
(or appropriate non-infringement, invalidity
or non-enforceability opinions) to be able to
use your own patented technology.
Patent Timing
• Know when to file a patent application
– Three months ago, your research paper
identifying a new technique for early
detection of prion-based diseases
published. You are now seeking patent
protection.
4
Patent Timing
• Question 1: Can you file a patent
application and receive patent protection in
the United States?
Patent Timing
• Question 1: Can you file a patent
application and receive patent protection in
the United States?
– Answer: Yes.
5
Patent Timing
• In the United States, you have a one-year
grace period from the time you first publicly
disclose, use, offer for sale, or sell your
invention to file a patent application.
Patent Timing
• Question 2: Can you file a patent
application and receive patent protection
outside the United States?
6
Patent Timing
• Question 2: Can you file a patent
application and receive patent protection
outside the United States?
– Answer: Generally no (Canada is the
exception).
Patent Timing
• Most foreign countries require you to file
your patent application prior to publicly
disclosing, using offering for sale, or selling
your technology.
7
Patent Timing
• Prior offers for sale, disclosure, and use is
one of the most overlooked issues in the
sale or licensing of intellectual property
assets – if you are buying or seeking a
license, ask!
Creating a Patent Portfolio
• Use invention disclosure forms
• Put together a team to review invention
disclosure forms and determine commercial
viability.
• Provisional versus utility application
• International patent portfolio
8
Provisional vs. Utility Patent
Application
• Provisional Application
– Are not examined
Provisional vs. Utility Patent
Application
• Provisional Application
– Are not examined
– “Hold place in line” for up to one year before a
utility must be filed.
9
Provisional vs. Utility Patent
Application
• Provisional Application
– Are not examined
– “Hold place in line” for up to one year before a
utility must be filed.
– Less expensive up front than preparing a utility
Provisional vs. Utility Patent
Application
• Provisional Application
– Are not examined.
– “Hold place in line” for up to one year before a
utility must be filed.
– Less expensive up front than preparing a utility.
– However, no issuance from a provisional.
10
Provisional vs. Utility Patent
Application
• Utility Application
– Examined
Provisional vs. Utility Patent
Application
• Utility Application
– Examined.
– Generally, a higher up front cost.
11
Provisional vs. Utility Patent
Application
• Utility Application
– Examined.
– Generally, a higher up front cost.
– Issues into a utility patent.
Provisional vs. Utility Patent
Application
• Should you file a provisional or utility
application?
– Likelihood of commerciability
12
Provisional vs. Utility Patent
Application
• Should you file a provisional or utility
application?
– Likelihood of commerciability
– Timing of bringing the technology to market
Provisional vs. Utility Patent
Application
• Should you file a provisional or utility
application?
– Likelihood of commerciability
– Timing of bringing the technology to market
– Cost
13
Provisional vs. Utility Patent
Application
• Should you file a provisional or utility
application?
– Provisional applications make the most sense
when you have a fast approaching public use,
disclosure or offer for sale and you want to
protect your foreign patent rights
Provisional vs. Utility Patent
Application
• Question: Can you file a patent
infringement lawsuit on a patent
application?
14
Provisional vs. Utility Patent
Application
• Question: Can you file a patent
infringement lawsuit on a patent
application?
– Answer: No – Courts have subject matter
jurisdiction only on issued patents.
Provisional vs. Utility Patent
Application
• Should you file a provisional or utility
application?
– Caveat – provisional applications can actually
slow down the time until issuance so, while you
have up to a year, you should file your utility
application as soon as possible.
15
Provisional vs. Utility Patent
Application
• Bottom line – get your applications issued
as quickly as possible to maximize their
commercial value.
International Patent Strategy
• You have a patent portfolio on valuable
diagnostic technology. Alpha Company
approaches you for an exclusive North
American license for a specific application
of that technology.
16
International Patent Strategy
• True or False Question: North America is
Canada, the United States, and Mexico.
International Patent Strategy
• True or False Question: North America is
Canada, the United States, and Mexico.
• FALSE – North America extends to the
Southern border of Panama.
17
International Patent Strategy
• True or False Question: North America is
Canada, the United States, and Mexico.
• FALSE – North America extends to the
Southern border of Panama.
• Moral: know your geography
International Patent Strategy
• True or False Question: North America is
Canada, the United States, and Mexico.
• FALSE – North America extends to the
Southern border of Panama.
• Moral: know your geography (or better yet
the licensing terms you are entering)
18
International Patent Strategy
• Which countries to file in
– Large existing market.
International Patent Strategy
• Which countries to file in
– Large existing market.
– Desire to expand into that country – potential
market.
19
International Patent Strategy
• Which countries to file in
– Large existing market.
– Desire to expand into that country – potential
market.
– License another entity in that country.
International Patent Strategy
• Which countries to file in
– Large existing market.
– Desire to expand into that country – potential
market.
– License another entity in that country.
– Desire to prevent competitor from practicing
the claimed invention in that country.
20
International Patent Strategy
• When To File In Foreign Countries
– Within one year of U.S. filing date (or earliest
filed patent application).
International Patent Strategy
• Filing Options
– Direct national filings in individual
country(ies).
21
International Patent Strategy
• Filing Options
– Filing in European Patent Office (EPO) –
designate up to 31 European countries in a
single EPO filing. Prosecutes to a European
Patent. Followed by registration in each
individual European country desired.
International Patent Strategy
• Filing Options
– Patent Cooperation Treaty (PCT) filing: may
designate most every industrialized nation
(exception: Taiwan)
22
Patent Marking
• What’s the big deal?
Patent Marking
• What’s the big deal?
– You can lose out on monetary damages if you
do not mark.
23
Patent Marking
• What’s the big deal?
– You can lose out on monetary damages if you
do not mark.
– If you do not mark your monetary damages will
start after you provide the infringer actual
notice.
Patent Marking
• Mark your product with the appropriate
patents
– If you cannot mark directly on the product,
mark on the container or packaging.
24
Patent Marking
• What if your patent claims are only method
claims?
Patent Marking
• What if your patent claims are only method
claims?
– You are not required to mark a product with a
patent that solely has method claims.
25
Patent Marking
• What if your patent recites method and
product claims?
Patent Marking
• What if your patent recites method and
product claims?
– You are required to mark.
26
Patent Marking
• Marking and Licensing
– A commonly overlooked provision in a license.
Patent Marking
• Marking and Licensing
– A commonly overlooked provision in a license.
• Require your licensees to mark.
27
Conclusion
• File patent applications early and often
• Make your counsel push them as quickly as
possible to issuance to maximize their value
• Think globally (and know your geography!)
• Mark your products
For questions or further information, please contact:
David B. Cupar, Esq.
McDonald Hopkins LLC
600 Superior Avenue, East
Suite 2100
Cleveland, Ohio 44114
(phone) 216-430-2036
(fax) 216-348-5474
(email) [email protected]
(web) www.mcdonaldhopkins.com
28