Nadya Reingand, PhD Yan Hankin, Esq. Washington DC, USA © Copyright. All rights reserved. Intellectual Property and Business Aspects of Digital Holography Patent Hatchery LLC July 14-17, 2014, Seattle, USA

Patent Hatchery Company

Intellectual Property Protection Registered IP (most common) Patents Trademarks Copyrights Other types of IP Trade secrets IP rights give the owner a right to exclude others from making, using, offering for sale or selling the invention Utility patents Design patents

Invention: from idea to business success patent licensing acquisition Company revenue

Role of patenting patenting Two options: Licensing IP via Office of Technology Transfer Creating a start-up and starting business yourself In both cases patenting is a key element of achieving revenue “Up to 75% of the company value is in its intellectual property”

Early publication T. S. Huang, "Digital Holography," Proc. IEEE 59(9), (1971) {Leonid Yaroslavsky, in his book, "Introduction to Digital Holography“} Scanned hologram Optical reconstruction Computer reconstruction

You searched for: ((digital) AND holography) IEEE Explorer 751 Google Scholar 54,300

Digital Google Scholar

Early days: 1968 patent on digital recording and the reconstruction of optical waves U.S. Patent No. 3,606,515, invented by Hirsch et al. originally assigned to IBM Corporation

Continuity data In the patent:

National application– PCT- US patent

Assignee #1 Daewoo Electronics

Assignees:

Patenting in digital holography: continents

Patent protection is territorial If you file patent application in one country, It is NOT protected in other countries Nobody in other country can get a patent for the invention which copies your patented in your country invention BUT Anyone can produce and sell your invention in other country, for example, for US patented product it is legal to manufacture it in China, sell in Germany IF THE INVENTION NEEDS TO BE PROTECTED WORLDWIDE, IT HAS TO BE FILED IN ALL COUNTRIES OF INTEREST

International patent application serves to coordinate efforts on filing, searching and the examination of patent applications does not grant international patents. 142 countries are in PCT After the PCT examination: inventors can see the examination report, and make a conscious decision on filing or not filing patents in a number of countries the patent rights are granted by national offices Entering national stage PCT (Patent Cooperation Treaty) is an agreement for international cooperation in the field of patents

Patenting in digital holography: countries

Largest owners of patents in the "microscopy" category of digital holography

21 World intellectual property organization is a specialized agency of the United Nations dedicated to developing a balanced international intellectual property (IP) system Remember that WO patent documents are patent applications Patents: WIPO PCT Publications start with letters WO

Once again about timing and sequences Generally: Sometimes: Almost never National patent filing PCT patent filing National patent filing Other country patent filing PCT patent filing National patent filing Other country patent filing National patent filing

Patent filing in foreign countries Working with licensed practitioner in each country Paying annuity fees ($100-$500) in each country Some countries have PPH program with USA In some countries – IP rights enforcement is problematic Patents of different countries

U.S.Patent Office encourages PPH patent filings Patent Prosecution Highway Program: Allowed in the foreign country -> allowed in USA Allowance of PPH application is much higher

Intellectual Property ownership IP ownership 1. Typically the employer owns IP ; Employee agreement IP assignment 2. Joint ownership of the intellectual property joint ownership means that each owner has independent right to exploit the intellectual property If IP is owned by two companies, can one of them sell IP without asking permission of the other side? Yes, both own 100%

Nathan Myhrvold formerly Chief Technology Officer at Microsoft, is co-founder of IV Patents as assets

Conclusions Patents: Trademarks Copyright Prior art search (next) Thank you for your attention