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Copyright © 2007-2011 Frisina, LLC Intellectual Property as a Business Tool Frisina, LLC Creating Wealth Through Intellectual Property TM www.frisinaIP.com.

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Presentation on theme: "Copyright © 2007-2011 Frisina, LLC Intellectual Property as a Business Tool Frisina, LLC Creating Wealth Through Intellectual Property TM www.frisinaIP.com."— Presentation transcript:

1 Copyright © 2007-2011 Frisina, LLC Intellectual Property as a Business Tool Frisina, LLC Creating Wealth Through Intellectual Property TM www.frisinaIP.com

2 Copyright © 2007-2011 Frisina, LLC Introduction Representative Sectors Chemicals Polymers Pharmaceuticals Biotechnology Biomedical Medical Imaging Advanced Materials Nanotechnology Semiconductors Medical Instruments Medical Tests Liquid Crystals Power Generation Fuel Cells Software Internet Law Business Methods 453 South High Street Suite 302 Akron, OH 44311 (330)338-0589 direct dominic@frisinaIP.com www.frisinaIP.com Our mission is to create wealth for our clients through the strategic use of intellectual property. Our mission is to create wealth for our clients through the strategic use of intellectual property. We understand the challenges facing businesses, and strive to secure and monetize our clients’ intellectual assets by couching sound legal strategy in innovative IP and business intelligence. With our combination of technical and legal expertise we are uniquely positioned to guide clients through the legal maze of intellectual property strategy facing both start-ups and more established ventures.

3 Copyright © 2007-2011 Frisina, LLC Introduction Patent BasicsPatent Basics From Conception to CapitalizeFrom Conception to Capitalize Offensive Strategy: Excluding CompetitorsOffensive Strategy: Excluding Competitors Defensive Strategy: Maintaining Your Freedom to OperateDefensive Strategy: Maintaining Your Freedom to Operate Monetizing IPMonetizing IP Do I Need a PatentDo I Need a Patent

4 Copyright © 2007-2011 Frisina, LLC Patent Basics Patentable subject matter –Any “…useful process, machine, manufacture, or composition of matter” 35 U.S.C. §101 Confers the right to exclude others from:Confers the right to exclude others from: –making, using, selling or offer to sell, or importing into the United States

5 Copyright © 2007-2011 Frisina, LLC Patent Basics TerritorialTerritorial –Only enforceable within the issuing nation –A foreign inventor can obtain a US patent and vice versa Time-limitedTime-limited –Generally 20 years from the earliest effective filing date

6 Copyright © 2007-2011 Frisina, LLC Patent Basics: Statutory Bars Certain acts can forfeit patentabilityCertain acts can forfeit patentability –Public disclosure, sales, offers for sale, etc. Time limitsTime limits –one year grace period in the US –Immediate forfeiture in most foreign countries Absolute novelty requirementAbsolute novelty requirement

7 Copyright © 2007-2011 Frisina, LLC Patent Basics: Legalese Legal Term Art: Prior Art: Enabling: Definition Any technology Any technology preceding your invention that may preclude patentability Providing enough information so that a person having ordinary skill in the relevant art can make and use the invention

8 Copyright © 2007-2011 Frisina, LLC Patent Basics: Legalese Legal Term IP: Practice: Reduction to Practice: Definition Intellectual Property including patents, trademarks, copyrights, and trade secrets Technology is “practiced” in the same sense that law or medicine is “practiced” An invention is said to be reduced to practice when it has been developed to such an extent that it could be made using only ordinary skill in the art.

9 Copyright © 2007-2011 Frisina, LLC Patent Basics: Legalese Legal Term Assign: Technology Space: (aka “patent space”) (aka “art space”) Definition To transfer ownership The space defined by a set of inventive variables.

10 Copyright © 2007-2011 Frisina, LLC Technology Space Robotics Pneumatics

11 Copyright © 2007-2011 Frisina, LLC Technology Space

12 Copyright © 2007-2011 Frisina, LLC From Conception to Capitalize

13 Copyright © 2007-2011 Frisina, LLC From Conception to Capitalize Four Stages: –Conception –Proof-of-Concept –Commercialization –Enterprise

14 Copyright © 2007-2011 Frisina, LLC Concept Stage Conception; The Idea Stage –Focus of Activities: Investigating potential duty to assign Determining the business model, and objectives Assessing the patent landscape Gathering resources: financial, technical, etc. Maintaining secrecy –Sources of capital Personal finances, credit cards, family and friends.

15 Copyright © 2007-2011 Frisina, LLC Concept Stage The Business Model –Product: robotic devices for blister packing pills –Manufacturing: local (USA) –Markets: Worldwide, esp. USA, Europe, Japan, China –Distribution: inside sales directly to end users

16 Copyright © 2007-2011 Frisina, LLC Concept Stage Assessing the Patent Landscape –Where is IP activity occurring in our patent space? –Who are the players? –How well resourced are my competitors? –What is my litigation risk in this patent space? –How well developed are my competitor’s patent portfolios? –How will the IP landscape change over the next 5-10 years?

17 Copyright © 2007-2011 Frisina, LLC Concept Stage Assessing the Patent Landscape

18 Copyright © 2007-2011 Frisina, LLC Concept Stage Assessing the Patent Landscape

19 Copyright © 2007-2011 Frisina, LLC Concept Stage Assessing the Patent Landscape

20 Copyright © 2007-2011 Frisina, LLC Concept Stage Assessing the Patent Landscape State-of-the-art search (a/k/a “collection search”) –All patents in a given technology space –Includes summary statistics and visualizations

21 Copyright © 2007-2011 Frisina, LLC Concept Stage Recap Determined the business model, and long-term objectives Assessed the patent landscape Gathered resources: financial, technical, etc. Maintained secrecy

22 Copyright © 2007-2011 Frisina, LLC Proof of Concept Stage Proof-of-Concept –Focus of Activities: Initial R&D to determine feasibility prototyping Likely to engage consultants and/or contractors IP acquisition May need outside funding

23 Copyright © 2007-2011 Frisina, LLC Proof of Concept Stage Sources of funding: –Personal resources –Some state, local, and private funding sources are available but it is very competitive e.g. JumpStart, LCCC/if * (25k/100k), Third Frontier *Lorain County Community College Innovation Fund

24 Copyright © 2007-2011 Frisina, LLC Proof of Concept Stage Incubators –Akron Global Business Accelerator (AGBA), GLIDE, Kent Regional Business Alliance, MAGNET, etc. –Can be a great way to Build business relationships Get coaching Get facilities Get funding leads

25 Copyright © 2007-2011 Frisina, LLC Proof of Concept Stage Initial R&D and prototyping –DIY –Contract services: Scientific, engineering or other consulting firms –Use NDAs and NCs until a patent application is filed

26 Copyright © 2007-2011 Frisina, LLC Proof of Concept Stage IP Candidates: –Technology A: blister pack grabber –Technology B: blister pack loader –Technology C: blister pack sealer

27 Copyright © 2007-2011 Frisina, LLC Proof of Concept Stage IP Acquisition –Strategically selecting technologies for patenting –Patent Availability/Novelty Searching –IP Intelligence Gathering –Preparing a patent application(s)

28 Copyright © 2007-2011 Frisina, LLC Proof of Concept Stage

29 Copyright © 2007-2011 Frisina, LLC Proof of Concept Stage

30 Copyright © 2007-2011 Frisina, LLC Proof of Concept Stage

31 Copyright © 2007-2011 Frisina, LLC Proof of Concept Stage IP Candidate Selection is based on –Patent Availability Opinion –Freedom to Operate (FTO) –IP Intelligence Report Our Choice: –Technology A: blister pack grabber

32 Copyright © 2007-2011 Frisina, LLC Proof of Concept Stage Patent Application Filed –We are free to openly promote/disclose our invention –BUT BE CAREFUL Trade secrets Subject matter not contained in the as-filed patent application

33 Copyright © 2007-2011 Frisina, LLC Commercialization Focus of Activities: –Potential new funding issue –Acting on the business model with our long-term objectives in mind Making products Setting up distribution Selling products

34 Copyright © 2007-2011 Frisina, LLC Commercialization Sources of funding –SBA Loans for moderate requirements –State/local/private grants and/or loans –VC and Angel investors

35 Copyright © 2007-2011 Frisina, LLC Commercialization Outsourcing versus manufacturing in-house –Outsourcing is an attractive option for new market entrants –In-house Manufacturing: Is a rare skill or specialized facility required? Is the risk of disclosing your know-how is too great? Is manufacturing very low volume?

36 Copyright © 2007-2011 Frisina, LLC Enterprise Stage Concerns and Opportunities –Sales growth –IP Strategy –Never stop innovating

37 Copyright © 2007-2011 Frisina, LLC Offensive Strategy

38 Copyright © 2007-2011 Frisina, LLC Offensive Strategy Exercising the right to exclude others –Beyond reserving your niche Populating a patent space with a patent “family” Offensive strategic planning should include –Business executives, Legal, and R&D

39 Copyright © 2007-2011 Frisina, LLC Offensive Strategy: Patent Space

40 Copyright © 2007-2011 Frisina, LLC Offensive Strategy Raise competitors’ cost of doing business –Legal costs, R&D costs, operations costs… Using NPE’s to your advantage –Non-Practicing Entities (aka “Patent Trolls”) –Sell/assign your IP but retain an exclusive license Let the troll litigate and pocket the proceeds

41 Copyright © 2007-2011 Frisina, LLC Offensive Strategy IP “abatement” insurance policy –Pays for the cost of enforcement Enforcement –Enforcement begins with a C&D letter Litigation may be necessary –Force a settlement –Litigate

42 Copyright © 2007-2011 Frisina, LLC Defensive Strategy

43 Copyright © 2007-2011 Frisina, LLC Defensive Strategy “The best defense is a good offense” –Yogi Berra Defensive strategy is also risk management –Risk of having to sue others –Risk of being sued

44 Copyright © 2007-2011 Frisina, LLC Defensive Strategy Risk Management; Preventative measures Patent availability searching –Identifying potentially problematic art Draft around, Flag for design around, or Abandon early Freedom to Operate (FTO) IP purchases or licensing-inIP purchases or licensing-in ContractContract –Non-Compete agreements –Joint Development Agreements Defensive publication

45 Copyright © 2007-2011 Frisina, LLC Defensive Strategy Defending against patent infringement –Self-financed defense –IP Insurance defense policy defense and indemnity policy –Defensive patent aggregation services Primarily for large entities

46 Copyright © 2007-2011 Frisina, LLC Defensive Strategy RPX Corporation www.rpxcorp.comwww.rpxcorp.com

47 Copyright © 2007-2011 Frisina, LLC Monetizing IP

48 Copyright © 2007-2011 Frisina, LLC Monetizing IP Sale or Licensing-out –Non-core technology, –Non-productive technology –Non-threatening technology IP auction houses –www.redchalkgroup.comwww.redchalkgroup.com –www.adaptipventures.comwww.adaptipventures.com –www.patenttransferltd.comwww.patenttransferltd.com

49 Copyright © 2007-2011 Frisina, LLC Monetizing IP Securitization of IP –Bond issue –Backed by licensing or royalty revenues –Existing income stream required –ipCapital Group (www.ipcg.com)www.ipcg.com

50 Copyright © 2007-2011 Frisina, LLC Monetizing IP Commercial lending –IP as collateral; must have “explicit” value –10-40% LTV –Many banks do not make pure IP loans Angel investors or venture capital –Usually based on the IP’s speculative or “implicit” value –Warning: VCs want to be in the driver’s seat

51 Copyright © 2007-2011 Frisina, LLC Do I Need a Patent?

52 Copyright © 2007-2011 Frisina, LLC Do I Need a Patent? Is a trade secret more appropriate? –Consider patentability (new, useful and nonobvious) –Consider the product life cycle Is your true interest exclusivity or stamping “patent pending” on your product –Consider the difficulty of reverse engineering or independent development Cost benefit analysis –The cost of patenting (or failing to patent) versus the benefit conferred

53 Copyright © 2007-2011 Frisina, LLC Do I Need a Patent? Cost/Benefit: 1.How much money do I stand to make? a)What would it cost to develop a product embodying the invention? b)What would it cost to manufacture and market the product? c)How much can I charge for the product? d)What is the size of the market for the product? 2.… versus without a patent?

54 Copyright © 2007-2011 Frisina, LLC Do I Need a Patent? If the difference between your share of the market with exclusivity versus without is greater than the cost of patenting then a patent is worth while. (e.g. initially about 5K plus up to an additional 15 to 20K over several years).

55 Copyright © 2007-2011 Frisina, LLC Do I Need a Patent? Recap: 1.How much money do I stand to make? a)What would it cost to develop a product embodying the invention? b)What would it cost to manufacture and market the product? c)How much can I charge for the product? d)What is the size of the market for the product? 2.… versus without a patent? Additionally: 3. Do I intend to seek capital investors? –IP is generally required

56 Copyright © 2007-2011 Frisina, LLC When to Patent Conception Proof-of-Concept Enterprise Factors: –Stage of development –Activity of your Competition –Cost versus resources on hand

57 Copyright © 2007-2011 Frisina, LLC Thank You Thank You For Further Information www.frisinaip.com Newsletters IP Owl Blog Slide Shows Contact Me Contact Me (330)338-0589 Direct dominic@frisinaip.com


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