1. Written description requirement & How entrepreneurs can monetize their IP, and what IP strategies might work against major players in healthcare and biotech industries May 8, 2010 Myers Wolin, LLC 1 Hay Yeung Cheung Myers Wolin, LLC Entrepreneur’s Day May 8, 2010

2. Written Description Requirement Independent of the Enablement Requirement Intended to ensure that the inventor was actually in possession of the invention at the time of the application was filed. Application specification (“spec”) provides support for the claimed invention including each element and/or step. “spec”  “speculation” May 8, 2010 Myers Wolin, LLC

3. Written Description Requirement Compliance with the written description requirement is a question of fact which must be resolved on a case-by-case basis.  Standard: Whether there is sufficient written description to inform a skilled artisan that applicant was in possession of the claimed invention. Typical written description requirement issues:  Whether new or amended claims are supported by the description of the invention in the application as filed.  Whether a claimed invention is entitled to the benefit of an earlier priority date. May 8, 2010 Myers Wolin, LLC

4. Written Description Requirement Examples of non-compliance of written description requirement: –In an unpredictable art, such as biochemistry, describing only one member within the group, where the group contains a wide variety of members. –The claims require an essential or critical feature which is not adequately described in the specification. Tips:  Obtain as much information as possible from inventors, such as partial structure, physical and/or chemical properties, functional characteristics alone or coupled with a known or disclosed correlation between structure and function. May 8, 2010 Myers Wolin, LLC

5. How entrepreneurs can monetize their IP, and what IP strategies might work against major players in healthcare and biotech industries May 8, 2010 Myers Wolin, LLC 5 Example applications in this field may range from genetic engineering, CT and MRI scanners to applications allowing physicians to remotely diagnose or view medical records of patients. Companies that invest in biotech & healthcare IT related applications include: Pfizer, Genentech, GE, Philips, EMC, NetApp, Oracle, etc.

6. May 8, 2010 Myers Wolin, LLC 6 Class 128, Surgery (includes Class 600) First-Named Assignee20052006200720082009Total INDIVIDUALLY OWNED PATENT2603052091941811149 OLYMPUS CORPORATION3231302539157 MEDTRONIC INC.2141262029137 GENERAL ELECTRIC COMPANY1319253442133 CARDIAC PACEMAKERS, INC.1524252343130 BOSTON SCIENTIFIC SCIMED, INC.81913183593 RESMED LIMITED202814101890 KONINKLIJKE PHILIPS ELECTRONICS N.V.16201320 89 SIEMENS AKTIENGESELLSCHAFT10714174189 SCI-MED LIFE SYSTEMS, INC.23271811483 Number of Patents

7. May 8, 2010 Myers Wolin, LLC 7 Class 128, Surgery (includes Class 600)

8. May 8, 2010 Myers Wolin, LLC 8 Class 435, Chemistry: Molecular Biology and Microbiology First-Named Assignee20052006200720082009Total INDIVIDUALLY OWNED PATENT121155122100141639 UNIVERSITY OF CALIFORNIA5450592933225 GENENTECH, INC.2444391420141 AJINOMOTO COMPANY INCORPORATED1623423128140 E. I. DU PONT DE NEMOURS AND CO.1035422227136 US DEPARTMENT OF HEALTH & HUMAN SERVICES1735322123128 APPLERA CORPORATION463323170119 WISCONSIN ALUMNI RESEARCH FOUNDATION1518232029105 GENENCOR INTERNATIONAL, INC.2021173210100 MILLENNIUM PHARMACEUTICALS, INC.26 2381497 Number of Patents

9. May 8, 2010 Myers Wolin, LLC 9 Class 435, Chemistry: Molecular Biology and Microbiology

10. May 8, 2010 Myers Wolin, LLC 10 Class 424, Drug, Bio-Affecting and Body Treating Compositions (includes Class 514) First-Named Assignee20052006200720082009Total INDIVIDUALLY OWNED PATENT2623042622212341283 BRISTOL-MYERS SQUIBB COMPANY7511188 92454 PFIZER INC.12884725156391 WYETH4269767294353 ASTRAZENECA AB6572627663338 HOFFMANN-LA ROCHE INC.3448677383305 MERCK + CO., INC.3548676193304 UNIVERSITY OF CALIFORNIA3858464442228 ELI LILLY AND COMPANY4042524448226 SCHERING CORP.3736474361224 Number of Patents

11. May 8, 2010 Myers Wolin, LLC 11 Class 424, Drug, Bio-Affecting and Body Treating Compositions (includes Class 514)

12. Individual inventors are by far the largest producers of patents. However, big corporations are much more successful in deriving revenues from patents. - Resource - Infrastructure - Experience - Industry Network 12May 8, 2010 Myers Wolin, LLC

13. Monetizing IP Value of the IP to the company –Market exclusivity –Licensing revenue –Collaborative relationships –Position company for purchase and/or investment –Advertising/Marketing value IP Valuation –Discounted Cash Flow Model –Black-Scholes Option Pricing Model –others 13May 8, 2010 Myers Wolin, LLC

14. Packaging and Pooling High tech product may contain many components, and each component may be covered by many patents. Well packaged portfolio is more valuable. Patent pool can reduce costs and risks. 14May 8, 2010 Myers Wolin, LLC

15. Create and Maintain an IP Strategy Establish an IP budget Designate a liaison Educate engineers and management Engineers should be reminded to protect their innovations Management should encourage innovation Proactive management of pipeline 1-5-10-20 year horizon Establish a public reputation of an IP rights holder, defender and enforcer 15May 8, 2010 Myers Wolin, LLC