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IP as a Business Tool

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Intellectual Property as a Business Tool
Frisina, LLC
Creating Wealth Through Intellectual Property TM

www.frisinaIP.com

Copyright © 2007-2011 Frisina, LLC

Introduction

453 South High Street
Suite 302
Akron, OH 44311
(330)338-0589 direct
[email protected]
www.frisinaIP.com

Representative Sectors
• Chemicals
• Polymers
• Pharmaceuticals
• Biotechnology
• Biomedical
• Medical Imaging
• Advanced Materials
• Nanotechnology
• Semiconductors
• Medical Instruments
• Medical Tests
• Liquid Crystals
• Power Generation
• Fuel Cells
• Software
• Internet Law
• Business Methods

Our mission is to create wealth for our clients through the
strategic use of intellectual property.
Our mission is to create wealth for our clients through the
strategic use of intellectual property. We understand the
challenges facing businesses, and strive to secure and
monetize our clients’ intellectual assets by couching sound legal
strategy in innovative IP and business intelligence. With our
combination of technical and legal expertise we are uniquely
positioned to guide clients through the legal maze of intellectual
property strategy facing both start-ups and more established
ventures.

Copyright © 2007-2011 Frisina, LLC

Introduction
• Patent Basics
• From Conception to Capitalize
• Offensive Strategy: Excluding Competitors
• Defensive Strategy: Maintaining Your Freedom to Operate
• Monetizing IP
• Do I Need a Patent

Copyright © 2007-2011 Frisina, LLC

Patent Basics
• Patentable subject matter
– Any “…useful process, machine, manufacture, or composition of matter”
35 U.S.C. §101

• Confers the right to exclude others from:
– making, using, selling or offer to sell, or importing into the
United States

Copyright © 2007-2011 Frisina, LLC

Patent Basics
• Territorial
– Only enforceable within the issuing nation
– A foreign inventor can obtain a US patent and vice versa

• Time-limited
– Generally 20 years from the earliest effective filing date

Copyright © 2007-2011 Frisina, LLC

Patent Basics: Statutory Bars
• Certain acts can forfeit patentability
– Public disclosure, sales, offers for sale, etc.

• Time limits
– one year grace period in the US
– Immediate forfeiture in most foreign countries
• Absolute novelty requirement

Copyright © 2007-2011 Frisina, LLC

Patent Basics: Legalese
Legal Term Definition
Art: Any technology
Prior Art: Any technology preceding your invention that may preclude
patentability
Enabling: Providing enough information so that a person having
ordinary skill in the relevant art can make and use the
invention

Copyright © 2007-2011 Frisina, LLC

Patent Basics: Legalese
Legal Term Definition
IP: Intellectual Property including patents, trademarks,
copyrights, and trade secrets
Practice: Technology is “practiced” in the same sense that law
or medicine is “practiced”
Reduction to Practice: An invention is said to be reduced to practice when it
has been developed to such an extent that it could
be made using only ordinary skill in the art.

Copyright © 2007-2011 Frisina, LLC

Patent Basics: Legalese
Legal Term Definition
Assign: To transfer ownership
Technology Space: The space defined by a set of inventive variables.
(aka “patent space”)
(aka “art space”)

Copyright © 2007-2011 Frisina, LLC

Technology Space

Robotics
Copyright © 2007-2011 Frisina, LLC

Technology Space

Copyright © 2007-2011 Frisina, LLC

From Conception to Capitalize

Copyright © 2007-2011 Frisina, LLC

From Conception to Capitalize
• Four Stages:
– Conception
– Proof-of-Concept
– Commercialization
– Enterprise

Copyright © 2007-2011 Frisina, LLC

Concept Stage
• Conception; The Idea Stage
– Focus of Activities:






Investigating potential duty to assign
Determining the business model, and objectives
Assessing the patent landscape
Gathering resources: financial, technical, etc.
Maintaining secrecy

– Sources of capital
• Personal finances, credit cards, family and friends.

Copyright © 2007-2011 Frisina, LLC

Concept Stage
• The Business Model
– Product: robotic devices for blister packing pills
– Manufacturing: local (USA)
– Markets: Worldwide, esp. USA, Europe, Japan, China
– Distribution: inside sales directly to end users

Copyright © 2007-2011 Frisina, LLC

Concept Stage
• Assessing the Patent Landscape
– Where is IP activity occurring in our patent space?
– Who are the players?
– How well resourced are my competitors?
– What is my litigation risk in this patent space?
– How well developed are my competitor’s patent portfolios?
– How will the IP landscape change over the next 5-10 years?

Copyright © 2007-2011 Frisina, LLC

Concept Stage
Assessing the Patent Landscape

Copyright © 2007-2011 Frisina, LLC

Concept Stage
Assessing the Patent Landscape

Copyright © 2007-2011 Frisina, LLC

Concept Stage
Assessing the Patent Landscape

Copyright © 2007-2011 Frisina, LLC

Concept Stage
Assessing the Patent Landscape
•State-of-the-art search (a/k/a
“collection search”)
– All patents in a given technology
space
– Includes summary statistics and
visualizations

Copyright © 2007-2011 Frisina, LLC

Concept Stage
• Recap
Determined the business model, and long-term objectives
Assessed the patent landscape
Gathered resources: financial, technical, etc.
Maintained secrecy

Copyright © 2007-2011 Frisina, LLC

Proof of Concept Stage
• Proof-of-Concept
– Focus of Activities:






Initial R&D to determine feasibility
prototyping
Likely to engage consultants and/or contractors
IP acquisition
May need outside funding

Copyright © 2007-2011 Frisina, LLC

Proof of Concept Stage
• Sources of funding:
– Personal resources
– Some state, local, and private funding sources are available
but it is very competitive e.g. JumpStart, LCCC/if * (25k/100k),
Third Frontier
*Lorain County Community College Innovation Fund

Copyright © 2007-2011 Frisina, LLC

Proof of Concept Stage
• Incubators
– Akron Global Business Accelerator (AGBA), GLIDE, Kent
Regional Business Alliance, MAGNET, etc.
– Can be a great way to





Build business relationships
Get coaching
Get facilities
Get funding leads

Copyright © 2007-2011 Frisina, LLC

Proof of Concept Stage
• Initial R&D and prototyping
– DIY
– Contract services:
• Scientific, engineering or other consulting firms

– Use NDAs and NCs until a patent application is filed

Copyright © 2007-2011 Frisina, LLC

Proof of Concept Stage
• IP Candidates:
– Technology A: blister pack grabber
– Technology B: blister pack loader
– Technology C: blister pack sealer

Copyright © 2007-2011 Frisina, LLC

Proof of Concept Stage
• IP Acquisition
– Strategically selecting technologies for patenting
– Patent Availability/Novelty Searching
– IP Intelligence Gathering
– Preparing a patent application(s)

Copyright © 2007-2011 Frisina, LLC

Proof of Concept Stage

Copyright © 2007-2011 Frisina, LLC

Proof of Concept Stage

Copyright © 2007-2011 Frisina, LLC

Proof of Concept Stage

Copyright © 2007-2011 Frisina, LLC

Proof of Concept Stage
• IP Candidate Selection is based on
– Patent Availability Opinion
– Freedom to Operate (FTO)
– IP Intelligence Report

• Our Choice:
– Technology A: blister pack grabber

Copyright © 2007-2011 Frisina, LLC

Proof of Concept Stage
• Patent Application Filed
– We are free to openly promote/disclose our invention
– BUT BE CAREFUL
• Trade secrets
• Subject matter not contained in the as-filed patent application

Copyright © 2007-2011 Frisina, LLC

Commercialization
• Focus of Activities:
– Potential new funding issue
– Acting on the business model with our long-term objectives in
mind
• Making products
• Setting up distribution
• Selling products

Copyright © 2007-2011 Frisina, LLC

Commercialization
• Sources of funding
– SBA Loans for moderate requirements
– State/local/private grants and/or loans
– VC and Angel investors

Copyright © 2007-2011 Frisina, LLC

Commercialization
• Outsourcing versus manufacturing in-house
– Outsourcing is an attractive option for new market entrants
– In-house Manufacturing:
• Is a rare skill or specialized facility required?
• Is the risk of disclosing your know-how is too great?
• Is manufacturing very low volume?

Copyright © 2007-2011 Frisina, LLC

Enterprise Stage
• Concerns and Opportunities
– Sales growth
– IP Strategy
– Never stop innovating

Copyright © 2007-2011 Frisina, LLC

Offensive Strategy

Copyright © 2007-2011 Frisina, LLC

Offensive Strategy
• Exercising the right to exclude others
– Beyond reserving your niche

• Populating a patent space with a patent “family”
• Offensive strategic planning should include
– Business executives, Legal, and R&D

Copyright © 2007-2011 Frisina, LLC

Offensive Strategy: Patent Space

Copyright © 2007-2011 Frisina, LLC

Offensive Strategy
• Raise competitors’ cost of doing business
– Legal costs, R&D costs, operations costs…

• Using NPE’s to your advantage
– Non-Practicing Entities (aka “Patent Trolls”)
– Sell/assign your IP but retain an exclusive license
• Let the troll litigate and pocket the proceeds

Copyright © 2007-2011 Frisina, LLC

Offensive Strategy
• IP “abatement” insurance policy
– Pays for the cost of enforcement

• Enforcement
– Enforcement begins with a C&D letter
• Litigation may be necessary

– Force a settlement
– Litigate

Copyright © 2007-2011 Frisina, LLC

Defensive Strategy

Copyright © 2007-2011 Frisina, LLC

Defensive Strategy
• “The best defense is a good
offense”
– Yogi Berra

• Defensive strategy is also risk
management
– Risk of having to sue others
– Risk of being sued

Copyright © 2007-2011 Frisina, LLC

Defensive Strategy
Risk Management; Preventative measures
• Patent availability searching
– Identifying potentially
problematic art
• Draft around,
• Flag for design around, or
• Abandon early

• Freedom to Operate (FTO)

• IP purchases or licensing-in
• Contract
– Non-Compete agreements
– Joint Development Agreements

• Defensive publication

Copyright © 2007-2011 Frisina, LLC

Defensive Strategy
• Defending against patent infringement
– Self-financed defense
– IP Insurance
• defense policy
• defense and indemnity policy

– Defensive patent aggregation services
• Primarily for large entities

Copyright © 2007-2011 Frisina, LLC

Defensive Strategy
• RPX Corporation www.rpxcorp.com

Copyright © 2007-2011 Frisina, LLC

Monetizing IP

Copyright © 2007-2011 Frisina, LLC

Monetizing IP
• Sale or Licensing-out
– Non-core technology,
– Non-productive technology
– Non-threatening technology

• IP auction houses
– www.redchalkgroup.com
– www.adaptipventures.com
– www.patenttransferltd.com
Copyright © 2007-2011 Frisina, LLC

Monetizing IP
• Securitization of IP
– Bond issue
– Backed by licensing or royalty revenues
– Existing income stream required
– ipCapital Group (www.ipcg.com)

Copyright © 2007-2011 Frisina, LLC

Monetizing IP
• Commercial lending
– IP as collateral; must have “explicit” value
– 10-40% LTV
– Many banks do not make pure IP loans

• Angel investors or venture capital
– Usually based on the IP’s speculative or “implicit” value
– Warning: VCs want to be in the driver’s seat

Copyright © 2007-2011 Frisina, LLC

Do I Need a Patent?

Copyright © 2007-2011 Frisina, LLC

Do I Need a Patent?
• Is a trade secret more appropriate?
– Consider patentability (new, useful and nonobvious)
– Consider the product life cycle
• Is your true interest exclusivity or stamping “patent pending” on your product

– Consider the difficulty of reverse engineering or independent development

• Cost benefit analysis
– The cost of patenting (or failing to patent) versus the benefit conferred

Copyright © 2007-2011 Frisina, LLC

Do I Need a Patent?
Cost/Benefit:

1. How much money do I stand to make?
a)
b)
c)
d)

What would it cost to develop a product embodying the invention?
What would it cost to manufacture and market the product?
How much can I charge for the product?
What is the size of the market for the product?

2. … versus without a patent?

Copyright © 2007-2011 Frisina, LLC

Do I Need a Patent?

If the difference between your share of the market with exclusivity versus without is greater than the
cost of patenting then a patent is worth while. (e.g. initially about 5K plus up to an additional 15 to
20K over several years).

Copyright © 2007-2011 Frisina, LLC

Do I Need a Patent?
Recap:
1.How much money do I stand to make?
a)
b)
c)
d)

What would it cost to develop a product embodying the invention?
What would it cost to manufacture and market the product?
How much can I charge for the product?
What is the size of the market for the product?

2.… versus without a patent?

Additionally:
3. Do I intend to seek capital investors?


IP is generally required

Copyright © 2007-2011 Frisina, LLC

When to Patent
Conception

Proof-of-Concept

Enterprise

•Factors:
– Stage of development
– Activity of your Competition
– Cost versus resources on hand

Copyright © 2007-2011 Frisina, LLC

Thank You
For Further Information
www.frisinaip.com
Newsletters
IP Owl Blog
Slide Shows

Contact Me
(330)338-0589 Direct
[email protected]

Copyright © 2007-2011 Frisina, LLC

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