Frank Ip Slides For Highland

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Information about Frank Ip Slides For Highland

Published on August 17, 2007

Author: mgaiss

Source: slideshare.net

IP Presentation Highland Capital Partners Roundtable Steven J. Frank, Partner Goodwin Procter August 2, 2007 © 2007 Goodwin Procter LLP

About Goodwin Procter Over 750 attorneys in Boston, Los Angeles, New York, Palo Alto, San Diego, San Francisco, Washington, D.C. Nationally recognized expertise representing technology and life sciences companies, financial services companies, as well as private equity and venture capital firms Nationally recognized expertise in intellectual property, products liability, FDA, commercial litigation, real estate and business law

Over 750 attorneys in Boston, Los Angeles, New York, Palo Alto, San Diego, San Francisco, Washington, D.C.

Nationally recognized expertise representing technology and life sciences companies, financial services companies, as well as private equity and venture capital firms

Nationally recognized expertise in intellectual property, products liability, FDA, commercial litigation, real estate and business law

Rankings & Recognition NATIONAL RECOGNITION in Chambers 2007 in the areas of Intellectual Property, Litigation, Financial Services, Life Sciences; Private Equity: Buyouts & Venture Capital Investment; and REITs ONE OF THE TOP IP defense firms (IP Law & Business) ONE OF THE TOP 10 firms for superior Client Service ( BTI Power Rankings ) RANKED 2 ND IN THE NATION in technology support among the AmLaw 200 (American Lawyer Tech Scorecard) Ranked in the GUIDE TO THE WORLD’S LEADING EXPERTS in Trademark Law and The Top 50 Trademark Attorneys

NATIONAL RECOGNITION in Chambers 2007 in the areas of Intellectual Property, Litigation, Financial Services, Life Sciences; Private Equity: Buyouts & Venture Capital Investment; and REITs

ONE OF THE TOP IP defense firms (IP Law & Business)

ONE OF THE TOP 10 firms for superior Client Service ( BTI Power Rankings )

RANKED 2 ND IN THE NATION in technology support among the AmLaw 200 (American Lawyer Tech Scorecard)

Ranked in the GUIDE TO THE WORLD’S LEADING EXPERTS in Trademark Law and The Top 50 Trademark Attorneys

Representative IP Clients

The Basics What is IP and Why do I care?

What is IP

and

Why do I care?

Protection mechanisms for technology Patents Protect Machines Processes Chemical compositions … almost anything you can think of Independent development is no defense to infringement

Patents

Protect

Machines

Processes

Chemical compositions

… almost anything you can think of

Independent development is no defense to infringement

Protection mechanisms for technology (cont’d) Copyright Protects Lots of stuff, but in terms of technology, primary relevance is software Limitations Narrowly applied Doesn’t exclude independent development

Copyright

Protects

Lots of stuff, but in terms of technology, primary relevance is software

Limitations

Narrowly applied

Doesn’t exclude independent development

Protection mechanisms for technology (cont’d) Trade Secrets Courts help those who help themselves Need to take steps to maintain secrecy Courts are concerned with unfair competition, not technology protection Independent development, reverse engineering defeat trade secrets Once the cat is out of the bag ...

Trade Secrets

Courts help those who help themselves

Need to take steps to maintain secrecy

Courts are concerned with unfair competition, not technology protection

Independent development, reverse engineering defeat trade secrets

Once the cat is out of the bag ...

The Basics of Patents Must be something inventive (relatively high bar) and useful (relatively low bar) Must not have been publicly disclosed more than one year ago (for US patents) Who is the inventor? A patent does not guarantee that you can actually practice the invention Will take a long time (~4 years) and cost a lot of money (~$15,000)

Must be something inventive (relatively high bar) and useful (relatively low bar)

Must not have been publicly disclosed more than one year ago (for US patents)

Who is the inventor?

A patent does not guarantee that you can actually practice the invention

Will take a long time (~4 years) and cost a lot of money (~$15,000)

Why Does Anyone Care? Wall out Competitors Defense Potential Income Value on Exit Credibility to Investors Articulated Description of Market Differentiation

Wall out Competitors

Defense

Potential Income

Value on Exit

Credibility to Investors

Articulated Description of Market Differentiation

Avoiding Common Pitfalls Work on your own time and equipment Understand your current obligations Document contributions from others Document code provenance Get assignments File something before you launch (provisionals) Do some searching Focus on the product, not patents

Work on your own time and equipment

Understand your current obligations

Document contributions from others

Document code provenance

Get assignments

File something before you launch (provisionals)

Do some searching

Focus on the product, not patents

Provisional Full Patent Application and (maybe) International (PCT) Application Non-Public Disclosure Tinkering Public Disclosure “ Patent Pending” 1 Year Foreign Patent Filings 18 Months Provisionals generally cost between $1,000 and $5,000 Full applications generally cost between $8,000 and $15,000 Strive for high reuse between provisional and full application PCT applications cost approximately $4-5,000 – almost all official fees Foreign applications cost between $3,000 (AU, CA) and $15,000 (EP and Japan) One well-drafted application can often lead to numerous issued patents

Provisionals generally cost between $1,000 and $5,000

Full applications generally cost between $8,000 and $15,000

Strive for high reuse between provisional and full application

PCT applications cost approximately $4-5,000 – almost all official fees

Foreign applications cost between $3,000 (AU, CA) and $15,000 (EP and Japan)

One well-drafted application can often lead to numerous issued patents

Possible Changes Accelerated Examination Peer Review Post-Grant Opposition Changes to Continuation Practice First-to-file

Accelerated Examination

Peer Review

Post-Grant Opposition

Changes to Continuation Practice

First-to-file

IP Presentation Highland Capital Partners Roundtable Steven J. Frank, Partner Goodwin Procter August 2, 2007 © 2007 Goodwin Procter LLP

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