L13 IP Strategy Flashcards Preview

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Flashcards in L13 IP Strategy Deck (25)
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1
Q

What is an IP strategy?

A
  • plan which you will create and increase the value of one or more products in a business
  • way of preventing others from exploiting your innovation by effectively using your IP
  • disciplined evaluation (quality and strength) of current IP (yours and others)
  • one pathway to provide maximum legal protection but at an expense
  • describes what you will do and how you will police and enforce your IP rights - protection of IP
2
Q

How is an IP strategy used?

A
  1. build your business plan
  2. leverage finance to fund your business (e.g. VC)
  3. stay in front of your competitors
  4. develop your commercialisation strategy
  5. know when, where and how to defend and enforce your IP rights
3
Q

Intellectual Property Rights

A

the legal means by which IP is protected

4
Q

Patentable subject matter

A

see onenote

  1. novelty
  2. inventive step
  3. usefulness
  4. industrial applicability
5
Q

Types of patent applications

A
  1. provisional patent application
    - establishes priority date
    - first step in patenting process
    - applicant can then disclose the invention
    - no examination, is not published, lapses after 12 months
    - does not lead to enforceable rights
  2. international/PCT application
    - filed with WIPO under patent cooperation treaty
    - patentability search and opinion issues 3-4 month from filing
    - is published 18 months from the priority date
    - defers national filings and related costs
  3. national patent application
    - filed in countries of interest
    - need to file translations in national language
    - examined by national patent office
    - granted and enforced under each countries’ national laws
6
Q

Typical path

A

see onenote diagram

7
Q

why do you need IP rights and IP strategy?

A
  1. competitive and commercial edge
    - stop others copying and imitating
    - competitors think twice - FTO
  2. tangible product to license or sell
    - develops an income/royalty stream
    - creates collaboration opportunities
  3. deterrent to competitors
    - used for litigation, threat of litigation and opportunity to license
    - defend your technologies
8
Q

Know why you are obtaining IP protection

A

see onenote

decision must be consistent with your business goals and budgetary constraints

  1. commercial objectives
    - licensing in/out technology
  2. obtaining a large IP portfolio
    - reputation
9
Q

Risk management

A

3rd party IPR may present a bar to market entry, putting business objectives at risk

  • competitors working in same area - similar IPR
  • product may have been done before - same IPR
  • many similar products on the market - crowded market
  • products with similar trademark as yours - confusion in the market
10
Q

Investors like patents

A
  • startups that develop patent portfolios have much better returns for investors and entrepreneurs

The mann study

  • companies without patents are twice as likely to go bankrupt
  • companies with patent received about 73% more funding
  • companies with patents are 4 times more likely to go to IPO (initial public offering)
11
Q

Why not to apply for IPRs?

A
  • fast moving technology
  • limited market value
  • trade secret might be of more value
  • first mover advantage
  • cost
12
Q

Key criteria relating to obtaining IPRs

A
  1. cost and ease of filing an application
  2. patentable and non-patentable subject matter
  3. prior art and competitors
  4. grace periods (US, AU, JAPAN)
  5. provisional protection following publication
13
Q

Grace periods

A

If you’ve disclosed it, you can still file something really quickly (within 12 months) and still get IP rights, it would still be considered novel (at least for US, AU and JP)

14
Q

Factors to consider when deciding where to file

A

see onenote slides

  1. business/commercial need for exclusivity
  2. FTO in that jurisdiction
  3. immediate interested parties - potential licensees/manufacturers
  4. patentability of various subject matters
  5. status of patent systems and enforcement
  6. production in that jurisdiction

etc…

15
Q

What to file? - subject matters

A

subject matter does matter

  • affects where you might file and what your claims will be like
  • type of subject matter can impact on where you file since the laws may prohibit some type of inventions
  • method of treatment, mere admixtures, business methods, computer programs
Certain countries (e.g. Japan, Europe) doesn't allow claim over methods of treating e.g. Surgery 
- Swap claim around, use of compound X for treatment of surgery (targets the company who uses compound X to produce treatment for obesity), to get protection in those countries
16
Q

What to file? - claims

A

see onenote slides

  1. broad or narrow claims
    - focus on end point
    - claim specifically for your product? designing around?
    - too broad encompasses too much prior art
    - too broad and may alert the examiner of prior art that is not relevant
17
Q

what to file? - type of application

A
  1. provisional application
    - separate or combined inventions
  2. timing of filing
    - are your ready to file each invention in the application
    - divisional application
  3. costs
    - more applications, more costs
    - benefit of several applications - licenses
18
Q

what to file? - description

A

see onenote

  1. important for instructing your patent attorney
  2. level of disclosure
    - have you got enough description
    - strict rules for added subject matter in some jurisdictions e.g. china and europe
19
Q

when to take action?

A
  1. timing is important
  2. filing - too early/too late?
  3. sufficient data
    - enough exemplification?
    - how much work do you need to do before filing an application?
20
Q

who is involved?

A
  1. who is the applicant?
  2. inventors - extremely important in US and AU
    - getting the chain of the title right
  3. review employment contracts
    - students
    - academics
    - researchers
21
Q

Protecting IP in an international market

A

see onenote slides

Policing and competitive surveillance

  1. not just to stop others but to look for opportunities such as licensing opportunities
  2. watching other IP filings
    - new applications
    - pending applications
    - granted patents
    - alive/lapsed
  3. gaps in the market
  4. trends
  5. where are your competitors heading?
  6. watching e.g. competitor activities
22
Q

Protecting IP in an international market - searching strategies

A

Searching strategies

  1. focused - can save you money
    - no fishing expeditions - too much prior art
    - capturing too much
  2. keywords
    - subject matter
    - competitors
    - inventors
  3. databases
    - patent office databases (USPTO, EP, IP Australia)
23
Q

Landscape searches

A

see onenote diagram

24
Q

Hypothetical example

A

see onenote slides

25
Q

Summary points

A

see onenote