Exercise in Prior Art Searches Two Cases: (1) Yours (2) Ours Determine Keywords for your technology Conduct a prior art search Be prepared to discuss results – How many hits? – Did one patent stand out? Tiene 1,5 horas

Exercise in Prior Art Searches Our Case The Invention is a paper ring to hold a paper napkin wrapped around a fork and knife. The paper ring has Velcro at the top and bottom of each paper strip to connect it in a ring. The paper strips are attached end-to-end in a tear-off roll. La Invención es un anillo de papel de tener una servilleta de papel envuelta alrededor de un tenedor y el cuchillo. El anillo del papel tiene Velcro por encima y fondo de cada tira de papel para conectarlo en un anillo. Las tiras del papel son conectadas de punta a punta en un rollo de lágrima-de.

Exercise in Prior Art Searches Our Case La Invención es un anillo de papel de tener una servilleta de papel envuelta alrededor de un tenedor y el cuchillo. El anillo del papel tiene Velcro por encima y fondo de cada tira de papel para conectarlo en un anillo. Las tiras del papel son conectadas de punta a punta en un rollo de lágrima-de.

Exercise in Prior Art Searches What did you find? Knock-Out Punch? Crowded or Not Crowded? Who Owns Patents in the Area?

Exercise in Prior Art Searches Our Case U.S. Pat. No. 6,644,498 is a knock-out punch

Stage of Development Answers the question How far along are you? The key is knowing what is left to do before the innovation can be commercialized It is a question of risk ¿Cuánto tiempo ha side trabajado?

Stage of Development Pharmaceutical Development Cycle: 10,000 Compounds 250 Compounds 5 1 Approved Drug IND filed NDA filed Discovery Review Clinical TrialsPre-clinical Phase IPhase IIPhase III (may extend)

Stage of Development Pharmaceutical Development Cycle: 10,000 Compounds 250 Compounds 5 1 Approved Drug IND filed NDA filed Discovery Review Clinical TrialsPre-clinical Phase IPhase IIPhase III (may extend) Risk

Engineered Product Stage of Development IntroGrowthMaturityDecline Sales Time

Engineered Product Stage of Development IntroGrowthMaturityDecline Sales Time Beta Development Research Investment

Engineered Product Stage of Development IntroGrowthMaturityDecline Sales Time Investment Beta Development Research Risk

Literature research Pre-formulation Formulation Stability Test Process Development Drug Development

Learn the development cycle for your technology Ask what steps have been done Stage of Development Waste Management

Learn tests needed – Certifications – Standards – Directives Example: Tin-based Solder – IPC – ANSI/J-STD-006B – ASTM B3 – RoHS (Europe) Stage of Development

Experiments Prototypes Alpha and Beta Tests What investment needed to develop? What investment for use? Stage of Development Temas importantes

Maintenance When you buy a car, you pay for it before you drive it away But, the purchase price is not your only expense You will have to buy gasoline and pay for service, tires, and repairs

Maintenance When you license IP, you are also not finished with costs Consider: – Patent Maintenance – Accounting to Co-Owners – Sharing with outside inventors – Reports to funding agencies – Reports to Administration

Maintenance Some projects become very complicated The cost of maintaining the relationships of commercialization sometimes outweigh the benefits

Maintenance High Maintenance Funding – Sponsor gets exclusive license… – And non-exclusive to background rights – You prosecute the patent app, but… – Sponsor has to approve all actions… – And you cannot abandon – You report interested parties to Sponsor – Sponsor negotiates license – Sponsor shares after recovery of funds Examples: SRC, EPRI

Maintenance Example Case 1: 12 inventors listed – Some moved away – Improvements filed… – with 6 inventors… – some new Case 1 gets licensed – How do we share? Inventors argue – Stalemate reached

Maintenance Example Case 1: Company fires CEO Board of Directors argue Company fails

Maintenance Example Case 2: Inventor moves here from another institute Improves an invention made at former location Moves to another institute Improves again Improvements appears valuable

Maintenance Example Case 2: First institute refuses to negotiate Third institute wants all rights assigned to them We have two companies interested

Maintenance Example Case 2: Companies each negotiated with each institute independently Six agreements Required 3 years of negotiation

Maintenance Example Case 2: One company raised $362 millones MXN 200 employees

Maintenance Important Factors Number of inventors Number of contracts to negotiate Number of reporting entities Look for cooperation of inventors

Maintenance You need to encourage internal IP staff to be business oriented, and to take risks based on proper assessments. – Jean-François Serrier, intellectual assets general manager, Solvay Serrier Excerpts from innovation quarterly, Issue 18 Winter 09

POP QUIZ! Prior Art question goes here? What questions should you ask to reveal the stage of development? What aspect of your assessment will be affected if you have 3 co-owners?