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Bio-Rad Patent Workshop “Patents from the Inside” James Robarts Excelsior Bonifico Company
Presented to Bio-Rad Q Copyright © 2006 Excelsior Bonifico Company 2 of 22 B) Utility Patent Categories – repeat 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
Presented to Bio-Rad Q Copyright © 2006 Excelsior Bonifico Company 3 of 22 B) Patent Parts Patent as Document TITLE Dates People: Inventors, Assignees, Attorneys, Examiners References to other patents (opt) Cited by (opt) Federally Sponsored R&D statement (opt) Serial numbers & status codes Patent as Invention Disclosure ABSTRACT BACKGROUND SUMMARY DESCRIPTION FIGURES Patent as Rights Published Claims File Wrapper Application Example – AppleApple Patent Example – Creative TechnologyCreative Technology
Presented to Bio-Rad Q Copyright © 2006 Excelsior Bonifico Company 4 of 22 B) Claim Scope Independents are the broadest Dependents add specificity to Independents, making them narrow Consider when making Boolean searches…more AND terms means more precision & restricted hits
Presented to Bio-Rad Q Copyright © 2006 Excelsior Bonifico Company 5 of 22 B) Claim Architecture Apple Application Creative Technology Extract
Presented to Bio-Rad Q Copyright © 2006 Excelsior Bonifico Company 6 of 22 D) Case Study – Claim Comparison
Presented to Bio-Rad Q Copyright © 2006 Excelsior Bonifico Company 7 of 22 D) Case Study – Claim Scope display 1 st order + select 2 nd order + display 2 nd order select 1 st order + display 2 nd order + select 2 nd order + display 3 rd order + access a track
Presented to Bio-Rad Q Copyright © 2006 Excelsior Bonifico Company 8 of 22 E) Case Study – Comparing Wrappers Apple Creative Technology
Presented to Bio-Rad Q Copyright © 2006 Excelsior Bonifico Company 9 of 22 E) Case Study – Current Status Microsoft 2000’01’02’03’04’05‘06 Creative Technology Apple Patent Granted Patent Rejected Non-provisional Filed Product Ship Patent Publish Non-provisional Filed Provisional Filed Product Ship
Presented to Bio-Rad Q Copyright © 2006 Excelsior Bonifico Company 10 of 22 F) Patents are Complex… A singe patent is Complex & Complicated… Claim Architecture Field of Invention – what does the innovation do? How is it categorized? Breadth, Type – claims a little, or lot?, process or material Interlocking, mutually dependent – thickets of claims Competing Claims, Wrapper – aiming before shooting, then weaving and dodging Different nations – different examiners/searchers, different claim negotiation results Market Opportunity Leverage – is technology improvement or disruptive? Roof & Pillars – product & its tools Obviousness of claims – subtle is worth less Targeted-market value – easy for licensees to appreciate? Position in value chain – everybody needs profit Royalty rates – plus art of the deal
Presented to Bio-Rad Q Copyright © 2006 Excelsior Bonifico Company 11 of 22 F)…Patent Portfolios are Worse! Corporate Objectives Portfolio Structure Technology family & citation treescitation Expiration Claim/tech/function/feature/benefit relationships
Presented to Bio-Rad Q Copyright © 2006 Excelsior Bonifico Company 12 of 22 F) Keeping Track of a Portfolio Databases for Legal Status Patent dates, fees, claim sets, title Patent signatures Rights contracts, availability, payments, obligations, shared rights Prior art, search terms & dates Infringement claim tables Relational Databases for Strategic Planning? Hundreds of independent claims (rights), each w/ potentially unique: Markets Benefits Products Features Technologies Dependent Claim Trees
Presented to Bio-Rad Q Copyright © 2006 Excelsior Bonifico Company 13 of 22 F) Innovation Characterization Table Business DevelopmentEngineeringLegal Market, in yrs Product Example<33- 5 >5Who is the Customer? Required Technical Investment Technology Dependencies Prior Art Density Wireless Embedded Biosensors Medical Monitoring (telepresence) 113Research, HMOs 453
Presented to Bio-Rad Q Copyright © 2006 Excelsior Bonifico Company 14 of 22 F) Keeping Track of Licensed Rights What is/is not available to license? Strategic vs. economic value
END End of “Patents from Inside” James Robarts Excelsior Bonifico Company
Presented to Bio-Rad Q Copyright © 2006 Excelsior Bonifico Company 16 of 22 Claim Comparison
Presented to Bio-Rad Q Copyright © 2006 Excelsior Bonifico Company 17 of 22 C) Search Exercise Report Instructions Compare & discuss results of search exercise Search Strategy: fields, terms Completeness Precision Record results on flipchart Share with class
Presented to Bio-Rad Q Copyright © 2006 Excelsior Bonifico Company 18 of 22 C) Search Exercise Report Instructions Compare & discuss results of search exercise Search Strategy: fields, terms Completeness Precision Record results on flipchart Share with class
Presented to Bio-Rad Q Copyright © 2006 Excelsior Bonifico Company 19 of 22 C) Case Study – Patents of Interest Source of Apple Rejection Microsoft – Platt 2003/ Three patents relevant to both Apple and Creative Technology patents Cluts 5,616,876 Dwek 6,248,946 Yamasura 5,918,303
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