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How To Protect Your Company's Intellectual Property

  1. How To Protect Your Company’s Intellectual Property
  2. About AppFolio SecureDocs AppFolio SecureDocs is a virtual data room for sharing and storing sensitive documents both internally and with outside parties. AppFolio, Inc. Company Basics: • Founded by the team that created and launched GoToMyPC and GoToMeeting • Backed by leading technology companies and investors • Web-based business software for financial and legal professionals
  3. About One3IP Management • One3 IP Management is an intellectual property management company that acts as your in-house IP counsel handling all of your company’s IP, licensing and other legal needs. • One3 IP views its clients as partners and does not nickel and dime them for every task, but works with its clients in a cost effective manner that allows One3 IP to learn and stay abreast of its clients current and future business needs and goals. • One3 IP does not follow the status quo in building its clients value through the obtainment of a broad patent portfolio and the protection of its clients trade secrets, but has developed novel methods that are cost effective and result in an IP portfolio that provides broad protection.
  4. About Peter Weinstein, Ph.D., J.D. • Nearly a decade as a scientist, including time at NIH, USAMRIID and as a Sr. Scientist at ImmuCell • Former Patent Examiner at the USPTO • Nearly a decade in private practice as a patent and general civil litigator and patent prosecutor • Six years at Baxter Healthcare (Sr. Counsel, IP) • Founder One3 IP Management
  5. Poll Question No. 1
  6. What is IP • Intellectual Property is property that results from original creative thought. • Generally, there are two types of Intellectual Property • Patents • The exclusive right granted by a government to an inventor to manufacture, use, or sell an invention for a certain number of years. • Trade Secrets • A secret process, technique, method, list, etc., used to advantage in a trade, business, profession, etc.
  7. Patents
  8. Poll Question No. 2
  9. Value Of A Patent • A patent has multiple uses • Protect your invention • Keep competitors from making, using or selling your invention • Raise revenue through licenses • Tender offers
  10. Patents are the “Life Blood” of an Organization ―Anyone, I would imagine, who has tried to create a biotech company knows just how important patents are…you realize it the first time you meet potential investors.” (Mads Øvlisen, Chariman of the Board of Directors, Novo Nordisk). ―When doing deals, sometimes we only show our stack [of patents], and sometimes the other party wants to do a lot of due diligence on our individual patents. But we never fail to give a presentation of about one hour on them—patents play a huge role in securing investment.‖ – CEO of a technology company ―The role patents play in obtaining funding and launching startups is nothing less than instrumental. It is fair to say that patents are the cornerstones of startups and they can make or break a young, fledgling company.‖ (BioSpectrum Asia Edition—August 2010) ―Intellectual property will always be at the forefront of biotechnology - some argue that the scope of patent protection actually defines the industry.‖ (
  11. Poll Question No. 3
  12. The Major Myths About Patents And Patenting In 2008, three prominent U.S. IP professors published a survey containing information gathered from over 10,000 companies in the software-internet, biotechnology, and medical device sectors. The survey results showed that many myths have arisen to support a company’s decision to not adequately protect their IP. Percent of Responders Financial Cost of Getting A Patent 57 Believed Technology Was Not… 38 Competitors Could Invent Around… 45
  13. The Status Quo • Your company, university, or research institution has been told to follow the status quo methods to obtain a patent: – hire an outside patent attorney whose job is to prepare patent applications based solely on the data provided by your scientists – to prosecute the patent application to obtain claims covering the invention described by the data – to file paper after paper in response to rejections from the patent office – while paying high fees and taking many years to get a patent – In spite of this, most company’s fail to adequately protect their technology The status quo is costly, time consuming, inefficient and frequently results in a low value return
  14. Break Out Of The Mold There is a Better Way • Prepare patent applications that not only cover your invention, but every conceivable and imaginable use of your invention and claim broadly. • You can license those areas that your company is not interested • Provides ability to ―horse-trade‖ with Examiner • Prosecute your patent application in a more efficient and cost effective manner that not only saves, time and money, but results in broader patent coverage. • Proactively Executed Prosecution (―PEP‖)
  15. Break Out Of The Mold There is a Better Way • Broadly covers the use of your company’s technology in its research and development space; • As well as your competitors space; and, • In areas your company, university or research institution are not interested in pursuing, but where you can still make money. • Take advantage of opportunities presented to make patent prosecution more streamlined and efficient. • Patent Prosecution Highway (―PPH‖)
  16. Break Out Of the Mold Your Technology Your Field The World
  17. Break Out Of The Mold Comprehensive Patent Application • Prepare broadly • Include lists • Molecules (all proteins, metals, drugs, composites, etc.), concentrations, time, uses , components, etc. • Use prophetic examples • Can enter data in U.S. and EP after file in support of claims • Prepare comprehensive set of claims • EP file in Specification; U.S. file and cancel with Prelim. Amendment
  18. Proactively Executed Prosecution
  19. How PEP Works Step One • Patent only Significant Technology • Every invention does not need to be patented! • File applications at earliest opportunity • Aggressively pursue broad claims • Your application should cover every possible use of your technology, even those your company will not pursue • Quickly start prosecution in U.S. • Take advantage of face-to-face interviewing opportunities as soon as possible • Result: Obtain first patent quickly!
  20. How PEP Works Step Two • Put the issued U.S. patent into the ―Patent Prosecution Highway‖ and expedite prosecution to move your patent quickly around the world • Perfect your ―Patent Estate Architecture‖ by obtaining additional patents in the U.S. by adding claim elements that are common components of your invention – More patents, more protection—all you need is one claim in one patent to survive a court challenge
  21. How PEP Works Step Two Continued • Move key newly issued patents around the world through the PPH • Keep key applications alive where possible – You want the ability to capture your competitors during the life of your patent application or expand the breadth of your coverage • To save money, file only in countries where value is added either through market opportunities (licensing), patent enforcement or tenders
  22. Trade Secrets
  23. Poll Question No. 4
  24. Basics of Trade Secret Protection General Concept of T.S. Law • Trade secrets comprise confidential information that has value to a company – Includes manufacturing methods, customer lists, formulations, etc. • To protect a trade secret, you have to do more than just say the information is confidential – While there is no one standard to protect trade secrets, there are general good practices that will allow your company, research institution or university to protect its trade secrets
  25. Basics of Trade Secret Protection General Concept of T.S. Law • The key is to show that you have made a concerted effort to identify and protect your trade secrets – The implementation of a ―Know-How‖ database • Secure location for documents • Limited access • Can retrieve many years later • Can use with a partner • Secure Docs online database
  26. Contact Us AppFolio SecureDocs 50 Castilian Drive Goleta, CA 93117 Phone: (866) 700-7975 @SecureDocsVDR One3IP Management 1560-1 Newbury Road, #327 Newbury Park, CA 91320 Phone: (800) 478-2152 @one3ip
  27. Thank You! Confidential ©2012 AppFolio, Inc.