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Carole Boelitz (caroleb)

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1 Carole Boelitz (caroleb)
7/1/2010 IP Legal Training 2 July 2010 Carole Boelitz (caroleb) Mobile: Office: 8/2/2010 1 1

2 Today’s Roadmap Public Disclosures and Patent Filings
7/1/2010 Today’s Roadmap Public Disclosures and Patent Filings Publishing Research Non-Disclosure Agreements Collaborations Copyright and other people’s stuff Informal Q&A  as we go! 8/2/2010 2 2

3 Types of IPR – Compared Protects Rights How Protection Arises Patents
7/1/2010 Types of IPR – Compared Protects Rights How Protection Arises Patents Inventions, ideas, designs, methods Right to prevent others from making, using, or selling an invention Filing an application and obtaining an issued patent Copyrights Expression, but not the idea itself Exclusive right to copy, distribute perform, display, modify Automatically, upon fixation in a tangible medium, but filing provides additional advantages Trade Secrets Confidential Information Right to prevent others from using or disclosing confidential information Reasonable measures to protect confidentiality (e.g., NDAs, security) Trademarks Protects against confusion of source of good or service (e.g., names, logos) Exclusive right to use mark in connection with certain goods and services Use (common law); filing application for trademark registration. 8/2/2010 3 3

4 Microsoft on IP Best products and services
Real choice among differentiated products Competitive marketplace Mutual respect for IP IP framework to collaborate and compete 8/2/2010 4

5 Microsoft’s Products Overview
7/1/2010 Microsoft’s Products Overview Microsoft Mobile Windows Embedded Steve Ballmer CEO Microsoft Dynamics Xbox Zune Peripherals Microsoft TV Entertainment & Devices Division Business Division Office System MSN Digital Advertising Platform & Products Division Windows Server Windows OS 8/2/2010 5

6 Patent Industry Standards
Industry typically files 1 patent for every $1M in R&D Microsoft in FY10 estimates about $10B R&D Patent budget for FY10: 2500 patent applications Microsoft typically invests 14-20% of its revenue in R&D 8/2/2010 6

7 What Should We Patent? Innovation Value
Forward-looking Patents Fundamental new technologies New business models New ways of doing things 5-10 year time frame Not yet in that space Not yet feasible – Maturity/Ripeness Breakthrough Inventions “Elegant” Enabling Technologies New Architectures Improvements on Existing Technologies Better, Cheaper, Faster, More Reliable Incremental 8/2/2010 7

8 What Should We Patent? Strategic Value
How are we going to use the technology? Product? Give away? How easily could someone ‘design around’? How easily could we detect a ‘copier’? 8/2/2010 8

9 Outbound license or sale
7/1/2010 How we use our patents Prevent others from obtaining patents Public milestone of our own technology Defensive Prior Art Technology specific Usually patent family and know-how Start up companies, SMEs, end brands, manufacturers Outbound license or sale 10-30 representative patents Broad license for specified term Allows collaboration between companies, reduces risk for both sides Cross-License Identify essential claims License often under RAND or RAND-Z terms Encourages adoption of our technology Standards Defensive purpose Counterclaim when possible Support licensees of Microsoft IP Litigation 8/2/2010 9 9

10 7/1/2010 The Breakthrough Rita Researcher has just discovered a great new approach to solving an age-old problem, and has written code to implement in a prototype device with a UI. She wants to protect her discovery so that she can market it. What are her options? Would there be any difference if her prototype and invention were hardware? 8/2/2010 10

11 Which of these are patentable?
7/1/2010 Which of these are patentable? 8/2/2010 11

12 Design and Utility Patent
Rita’s product Code files Copyright Code Functionality Utility Patent UI Design and Utility Patent Device Product/company name Trademark 8/2/2010 12

13 Patent Alternatives Publication Trade Secret
Best used when invention has low right-to-exclude value Trade Secret Invention can be kept secret 8/2/2010 13

14 Patentability in reality
It’s Not Enough Just To Be Different New/ Novelty Non-obvious/ Inventive Step Multiple references Tension with broadness Useful/ Indust. applicability 8/2/2010 14

15 Components of a Patent Application
a written description of the invention with instructions on how to use it Specification defines the scope of what you claim to be the new and non-obvious part of your invention Claims optional, but useful to further explain the invention and how it works Figures enablement and best mode Technical Requirements 8/2/2010 15

16 The Application Process at Microsoft
Invention Disclosure Form What How Alternatives Advantages Prior solutions Disclosure Meeting 1:1 meeting with drafting attorney Describe the problem space Block diagrams are helpful Talk about details Application Drafted Review draft application Discuss changes with drafting attorney if minor issues remain Prosecution and Issuance Update direction and priority of technology Are allowed claims valuable? 8/2/2010 16

17 7/1/2010 Publish or Perish Rita Researcher submits a paper for publication by the Hyper Tech Society, a pre-eminent organization in her field. The Hyper Tech Society has a confidentiality policy for its submissions but publishes accepted papers. A few weeks after her submission, she learns that her paper will be published in a week. She contacts her Patty Patents, her patent attorney, about filing a patent application on the technology disclosed in the paper. Can Patty obtain patent protection for Rita’s invention? If so, where? 8/2/2010 17

18 Public Disclosure and Patents
7/1/2010 Public Disclosure and Patents Can destroy patent rights What is “public disclosure”? United States: 1-year grace period Outside US: no grace period (strict novelty) ing draft paper to peers Public blog of research External website NDA? 8/2/2010 18

19 Potential International Patent Rights Lost Potential Public Disclosure
When Should We Patent? File Early Identify IP early in design phase Formulate protection strategy Project Def Code Ship Beta Versions B1 B2 B3 RC1 Best Time To File RTM Spec 1 Year to File for U.S. Patents Potential International Patent Rights Lost Public Domain Potential Public Disclosure Design Implement Stabilize Release Plan 8/2/2010 19

20 Exchanges of Confidential Info
Can productive discussions take place without exchanging confidential information? NDA Obligations Appearances of impropriety NDAs do NOT cover code 8/2/2010 20

21 Collaborations Build Relationship Identify Problems Solve problems NDA
AGREEMENT 8/2/2010 21

22 Collaboration Options
Do we want exclusive ownership of this IP? Hire as consultant, Visiting Researcher, Intern, temp, or employee Sponsored or Collaborative Research Agreement If Yes - get contract MS owns resulting IP Beware of overlap with Uni work Plan ahead to get contract before work starts Can be slow Limited rights 8/2/2010 22

23 BUG your code and web sites
Copyright Demo/Events Images – ©and PII Publications BUG your code and web sites Media Training set (data) Code Libraries 8/2/2010 23

24 Questions? 8/2/2010 24

25 THANK YOU!! Carole Boelitz +44 776 435 9689 +44 1223 479 868 8/2/2010
25

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