Patent Strategy: A PortfolioBased Perspective for Emerging Businesses

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Patent Strategy A Portfolio-Based Perspective
for Emerging Businesses
November 10, 2006
Christopher S. Tuttle tuttle_at_ahmrt.com
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Patent Basics
A U.S. patent is a negative right. It entitles
the holder, for a limited time, to prevent others
from making, using, selling or offering to sell
the claimed invention in the United States
What
File application Demonstrate to the Patent
Office that the invention is (1) new, (2) useful
and (3) non-obvious
How
(5) Deter competition / construct barriers to
entry (6) Obtain financing (7) Build portfolio
assets with eye toward acquisition (8) Develop
alliances
(1) Sue for and/or injunction (2) Generate
licensing revenue (3) Cross-license (4) Enhance
defensive posture
Why
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Startup Mode - Infancy

• Great ideas, lots of talent, energy and passion

But tight on funding and time little or no
intellectual property savvy
U.S. Provisional Patent Application
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Provisional ApplicationA method of establishing
an early priority/filing date
First (1) non-confidential disclosure or (2)
actual/attempted commercialization
Must establish priority (file app.)
U.S. / NAFTA one-year grace period
--------------------------------------------- one
year
t(0)
Most Other Countries Absolute Novelty (no grace
period)
Interested in preserving opportunities for
foreign patent protection? If so, file and
establish priority before first
disclosure/commercialization
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Next Steps Strategy?
New Feature Emulate cable box remote control on
screen of remote computer
New Feature Improved compression and
transmission of video data
New Feature Generation of targeted advertising
content from internet
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Moving to a Portfolio-Based Strategy

• Your most successful competitors will
  undoubtedly employ a portfolio-level strategy
• Increased capacity to obtain money damages and
  injunctions through judicial process
• Increased licensing revenues
• More bargaining power in negotiations and
  increased ability to defend against lawsuits and
  other attacks
• Portfolio typically is greater than the sum of
  its parts
• Portfolio approach produces cost savings

Why?
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Moving to a Portfolio-Based Strategy
Establish IP team leaders and have regular
meetings
Raise IP awareness among all team members - Uses
/ value / role of patents to company - Key
rules bar dates, consequences of
disclosure - Use of Confidentiality agreements
and other agreements with third parties
How?
Create processes and infrastructure that support
innovation - Brainstorming meetings - Invention
Disclosure Forms
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Invention Disclosure Formsan important piece of
IP infrastructure

• A mechanism for capturing and recording
  potentially valuable IP
• A checklist that functions to repeatedly
  reinforce key patent law concepts, such as the
  consequences of public disclosure
• A tool for improving communication among all
  team members, including outside counsel
• Good invention disclosures improve the quality
  of patent applications and reduce
  preparation/filing costs

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Field Awareness - Whitespacing

• Competitor 1

• Competitor 2

• Partner?

• Licensee?

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Patent Strategy A Portfolio-Based Perspective
for Emerging Businesses
Thank You
November 10, 2006
Christopher S. Tuttle tuttle_at_ahmrt.com