Evaluating IP Options July 12 2015 Curtis Droege Manager of Underwriting Outline The Initial Application Invention Disclosure Documentation Details Understanding the Inventive Space Invention Definition ID: 710868
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Slide1
The Disclosure InterviewEvaluating IP OptionsJuly 12, 2015
Curtis Droege – Manager of UnderwritingSlide2
Outline
The Initial Application
Invention Disclosure
Documentation Details
Understanding the Inventive Space
Invention DefinitionSlide3
Initial ApplicationSample Invention Disclosure (1 of 2)
Background
How did the invention come about?
Summary of the Invention
What is believed to be unique?
Can you summarize the invention in one or two sentences?
Brief Description / Drawings
Context for the Invention
Known products, patents or publications
Preferred Product Design
Alternate Product Designs
Perceived Limits (not practical beyond
x
, will not work beyond
y
)Slide4
Initial ApplicationSample Invention Disclosure (2 of 2)
External Activities
Disclosure to others, what, when, and to whom
References
Reference to other filed applications?
Inventors may not be familiar with Cont., CIP, Div. language
Note
If joint inventors
external
to Company, are contracts in place for addressing ownership, cost sharing, licensing? Issues can be sufficiently complex to negate the value of a patent filing.Slide5
Initial ApplicationInventor’s Notebook –
Still a good idea …
Why?
Derivation
Proceedings (37
CFR
Part
42)
Post-AIA
Inter
Partes
proceeding where
a party “derived” an idea from the actual inventor, and then was the first to file a patent application
Establish
Inventorship
Public or “private” disclosure dates, and what exactly was disclosed
Good Practice
Document (preferably) in a bound notebook (and preferably numbered),
Invention notes, references to corresponding computer files (CAD file)
Involved parties – who did what (conception, reduced to practice)
S
igned and witnessed (preferred)
Q: In lieu of notebook, e-mail to self? Good question for attorneys …Slide6
Understanding the Inventive SpaceInventor’s
Perspective
“…
cannot find a product like this …” or “solved a challenging problem”
Client Expectation: Filing a patent application will “protect” the product
Reality:
Disclosure Interview may be the first experience in strategic
thinking
Introducing Patentability Requirements
Simple explanations – reserve comprehensive discussions for take-home reading
Regarding Non-obviousness
Inventors will over censor their inventions as “obvious”
Many are of experts – well beyond the standard of “ordinary”
Encourage inventors to disclose inventions even if they believe them to be
obviousSlide7
Understanding the Inventive SpaceNeed for Prior Art Search
To anticipate the breadth of allowable claims
Breadth of allowable claim that is likelySlide8
Understanding the Inventive SpaceNeed for Prior Art Search
To provide context for client-practitioner strategic discussions
Scope of likely coverage
Value v. cost, uncertainty, and
timing
Regarding
Value
ANY simplistic assertion of general patent value
will be wrong
Many strategic factors involved
3rd party valuation nearly impossible
Discrete valuation, apart from portfolio valuation, is questionable
If you need a number, see
chart,
then make up a situational discount
rate
http://patentlyo.com/patent/2012/02/uspto-maintenance-fees.html
8
5% paid
66% paid
50% paidSlide9
Invention Definition“My invention is …” only the beginning
Based on all preceding information, and
Based on potential strategic value (reference Gary’s upcoming presentation)
What should the invention become?
Merely accepting a “my invention is” mentality is less likely to result in an invention having strong strategic value
Invention Shaping
Moving beyond the “problem solved”, the “cool idea”, and merely asking the inventor to consider “alternate embodiments”
Requires the practitioner to understand the technology and the strategic possibilitiesSlide10
Invention DefinitionInvention Shaping
Example 1:
1) A fluid connection for an inkjet printer comprising:
a) An ink cartridge containing a
needle
; and
b) A printer containing a
septum
Likely
infringement:
OEMs – only. But one of many fluid connectors
options. Value? LOW
Example 2:
1) An ink cartridge for an inkjet printer comprising:
a) A
needle
having [dimensions], and
b) A
shroud
configured to be concentric to the needle …
Likely infringement:
Aftermarket manufacturer. Value? VERY HIGHThe invention is shaped toward claims that protect the strategic interests of the company - the ink
cartridgeSlide11
Final ThoughtCurtis DroegeUnderwriting Manager
cdroege@patentinsurance.com
502-855-5328
Practitioner is the inventor’s coach, mentor, and champion
Teach
Encourage
Inspire
Thank You!