This document provides an overview of strategies for protecting intellectual property. It discusses the differences between types of intellectual property like patents, trademarks, and copyrights. It then focuses on patent strategies, explaining how to integrate strategies into patent applications by focusing claims, using a broad specification, and keeping applications alive. Strategies directly influence patent value by strengthening the patent and showing demand. The document provides tips for evaluating if a patent application has been created well and clearly demonstrating patent infringement.
4. Introduction
• Counsel individual inventors to Fortune-500 sized companies
• Assisted companies in monetizing patent assets in excess of $100M
• Repeatedly ranked top 300 IP strategist in the world since 2016
• Written 10+ books/textbooks on intellectual property topics
• Founded an IP clinic in San Jose and established multiple IP degree programs
5. Summary
• What are differences between types of intellectual property?
• What are patent strategies?
• How to integrate strategies into a patent application?
• How strategies directly influence the value of your patent?
• Has a patent application has been created well?
• How to show potential patent infringement?
10. RULE #1: Simplicity Wins
• make sure that you communicate any and all of your
patentable ideas (even the complex ones) in such a way that
anyone can understand
• a lay jury will one day be the judge of your patent – keep that
in mind as you describe your invention
Patent Strategies
13. • Focus?
• Protect the core invention
• How?
• File multiple applications, each targeted at a different aspect of the core technology
• File one main application, and spin off multiple continuations, each directed to a
different aspect of the core technology
• Breadth of claim sets?
• Narrow claims sets that protect the most core technology
Core Technology Patents
14. • Focus?
• Describe where the market will be in 10 years
• How?
• Think outside of the box
• Would your invention work in a different environment? Interaction with other devices? Network connectivity?
• Very in depth specification
Market Protection Patents
15. • Focus?
• Allow you to target infringing products
• Allow you to protect yourself against assertions
• How?
• Broad claims but sufficiently narrow
• Broad specification
Offensive/Defense Patents
18. • Patent strategies focus on the USE of the patent
• Nonetheless, patent strategies influence HOW a patent
specification and claims are written
Implementing Strategies
19. • Claims
• A variety of claim sets
• Narrow and broad; alternative designs
• Clear language with good support in the specification
• Specification
• Broad and deep specification which is forward thinking
• Simple terminology with clear embodiments/examples
• Keep your patent alive so that claims can be amended if needed
Implementing Strategies
20. • How would you claim a pencil?
• What are the parts or classes of your invention?
• How do the parts connect?
Example
US6547465
21. • Strategy #1: Core Technology
• Narrow elements: writing instrument; elongated cylindrical rod of graphite; wood surrounding graphite; rubber
erasure
• Remember to focus on a narrow claim
• Strategy #2: Offensive/Defensive
• Can we broaden the form (e.g. shape, structure, etc.)?
• Can we broaden the composition (e.g. material, etc.)?
• Is a shape needed?
Types of Claiming
22. CORE TECHNOLOGY CLAIM
A writing instrument, consisting of:
an elongated cylindrical rod
consisting of graphite;
an elongated hexagonal rod
consisting of wood, the hexagonal rod
surrounding an outer diameter of the
cylindrical rod;
a cylindrical aluminum cylinder
extending from one end of the hexagonal
rod and defining a hollow interior volume;
and
a cylindrical rubber erasure
positioned in the hollow interior volume.
Comparison of Claiming
OFFENSIVE/DEFENSIVE CLAIM
A product, comprising:
an inner portion; and
an outer portion coupled to
the inner portion;
wherein the inner portion is
configured to mark a surface in contact
therewith.
23. Claim Strategies – Central v Peripheral
Jeanne C. Fromer, “Claiming Intellectual Property,” The University of Chicago Law Review, Vol. 76 (2009), available
at http://lawreview.uchicago.edu/sites/lawreview.uchicago.edu/files/uploads/76.2/76_2_Fromer.pdf.
Core Technology
Claiming
Offensive/Defensive
Claiming
24. • What have you invented?
• Simply a wood writing device with graphite?
• What if you used lead instead? What if you used ink?
• What if you used it as a stylus on an input device?
• The specification should describe not only the core invention, but also all of the
other ways in which it could be potentially implemented
Specification Strategies
25. • In implementing strategies, focus on:
• Claim diversity
• A deep, well thought out, and clearly described specification
• Keep a family member alive if necessary
Recap
27. Logistics + Demand = Monetary Value
Logistics = What is the strength of the patent?
Demand = Is there a demand for the patent?
Patent Value Formula
28. Portfolio Strategy
Breadth of the claims
Depth of prosecution process
File Wrapper Considerations
Live family members
Patent Value
Clear Showing of
Infringement
= Monetary Value
+
STRATEGIES ARE PLANNED
APPS/CLAIMS ARE INFLUENCED
STRATEGIES ARE IMPLEMENTED
30. • Portfolio Strategy?
• Breadth of the claims/Specification?
• Depth of prosecution process?
• File Wrapper Considerations
• Live family members?
Logistics: Strength of Patent
31. • Were any statements made which could further limit the
patent claims? (i.e. prosecution history estoppel)
• Was the prior art distinguished in any manner?
• Was a term defined in a particular way?
• What was argued to get around the prior art?
• Is the construction of the patent now consistent with what
was argued then?
• If no statements were made by the Examiner, is that
necessarily good?
File Wrapper – What to look for?
32. • Life of the patent: how old is it?
• What is the priority?
• Patent Parents and patent children
• If there is still a living member of the family, value increases because the claims can be
potentially modified to get a more direct read on infringing products.
Timing Issues
34. • 1. A table, which comprises:
• a surface;
• one or more support legs;
• one or more attachments for attaching the one
or more support legs to the surface, wherein the
one or more support legs are mounted in a
direction orthogonal to the surface and extend
downwardly therefrom.
Demand: How to show infringement
35. Infringing?
⚫ 1. A table, which comprises:
⚪ a surface;
⚪ one or more support legs;
⚪ one or more attachments for
attaching the one or more support
legs to the surface, wherein the
one or more support legs are
mounted in a direction orthogonal
to the surface and extend
downwardly therefrom.
38. Portfolio Strategy
Breadth of the claims
Depth of prosecution process
File Wrapper Considerations
Live family members
Recap
Clear Showing of
Infringement
= Monetary Value
+
41. • Is infringement shown?
• If not, go back to claim charts.
• If infringement is shown, what are my options?
• Litigation Route
• Brokerage Route
• Licensing Route
Monetization Options
42. • Options
• You “assert” your patent in some manner
• Have another entity “assert” your patent for you
Litigation Considerations
⚫ Questions
⚪ Do you have the money?
⚪ Do you know where to file?
⚪ Can you play the waiting
game?
43. • Do you go door-to-door?
• Patent brokers
• NPEs
• Patent Holding/Licensing Companies
• Examples
• Nortel: $4.5B for 6,000 patents
• Motorola: $12.5 for 24,000 patents
Brokerage Considerations
44. • Is it worth it?
• Qualcomm reportedly makes almost $11B off of licensing.
• How much time and energy does it take?
• Can I license without suing?
• Depends on the company – some will turn a blind eye until they ‘have to’ respond to a
complaint.
• Can I license without brokering?
• Yes – but you may still want to engage in licensing considerations so that you retain
some type of a license.
• What type of license do you want?
• Open standards, royalty license, strict license, out-of-the box license
Licensing Considerations
