© Kolisch Hartwell 2014 All Rights Reserved, Page 1 Oregon Best Fest September 2014 Peter D. Sabido Intellectual Property Attorney Kolisch Hartwell, P.C. September 16, 2014

© Kolisch Hartwell 2014 All Rights Reserved, Page 2 Kolisch Hartwell, P.C. Overview Intellectual property law firm founded in 1952 Full-spectrum intellectual property practice Broad technical expertise and experience Offices located in Portland, OR and Palo Alto, CA Peter D. Sabido Intellectual property attorney, 11+ years Patent/trademark prosecution and licensing Senior engineer at Intel Corporation B.S. Chemical Engineering and M.S. Environmental Engineering Registered professional engineer

© Kolisch Hartwell 2014 All Rights Reserved, Page 3 What is Patentable? Patentable Devices Compositions of Matter Processes Articles of Manufacturing Methods of Use Computer Software Business Methods Genetically Engineered Organisms Not Patentable Laws of Nature Abstract Ideas Fundamental Truths Mathematical Formulas Natural Phenomena Principles Mental Processes

© Kolisch Hartwell 2014 All Rights Reserved, Page 4 What is Patentable? Alice Corp. v. CLS Bank Intl. (134 S. Ct (2014)) Computerized scheme for mitigating settlement risk found to be simply an abstract idea Merely requiring generic computer implementation fails to transform the abstract idea into a patentable invention Abstract ideas are not patentable unless there is an “inventive concept” that adds “significantly more” Transforming an abstract idea into a patentable invention:  An improvement in computer functioning; or  An improvement in another technological field

© Kolisch Hartwell 2014 All Rights Reserved, Page 5 Types of Utility Applications Provisional  Establishes a filing date  Simple filing requirements and not substantively examined  Extends patent term up to one year  PCT or foreign filings must be filed within one year  Automatically lapses one year from filing date Non-Provisional  Ability to claim priority to provisional, PCT, or foreign filing  Begins examination process  Strict filing requirements  May ultimately lead to a patent

© Kolisch Hartwell 2014 All Rights Reserved, Page 6 Types of Utility Applications Continuation  Filed during pendency of an earlier “parent” application  Ability to claim priority to an earlier “parent” application  “New matter” cannot be added Continuation-in-Part  Same as continuation application but includes “new matter”  Only the “new matter” receives a new filing date Divisional  Filed as a result of a restriction requirement on an earlier “parent” application  Ability to claim priority to an earlier “parent” application

© Kolisch Hartwell 2014 All Rights Reserved, Page 7 Lifecycle of a Patent: Filing & Prosecution File U.S. Provisional U.S. Application published Priority date 18 months ~3 years U.S. Patent Granted 12 months File PCT or Foreign Application months Enter PCT National Phase Prosecution File U.S. Non-Provisional

© Kolisch Hartwell 2014 All Rights Reserved, Page 8 Lifecycle of a Patent: Maintenance & Rights Non-Provisional Filed Earliest Filing Date 20 years Patent Expires Patent Granted ~ 3 years 3.5 years Maintenance Fees 7.5 years 11.5 years

© Kolisch Hartwell 2014 All Rights Reserved, Page 9 Ring-Fencing What is it?  Surrounding one or more key patents with all conceivable improvements and alternatives  Building a wall around the market to preempt competition Why use this strategy?  Mitigate risk  Protect key patents  Protect future business  Obtain significantly broader patent protection  Prevent competitors from blocking future technology

© Kolisch Hartwell 2014 All Rights Reserved, Page 10 Ring-Fencing

© Kolisch Hartwell 2014 All Rights Reserved, Page 11 Ring-Fencing When to consider this strategy?  Earlier the better  Preferably before key patent is granted  Ideally prior to competition using a “fencing” strategy What does it take to execute this strategy?  At least one or more additional patents  Additional expenses and resources  Anticipation of practical improvements and alternatives  Reviewing patent portfolio on a periodic basis