Utilizing IP to Access Funding

Nutter McClennen & Fish LLP
Seaport West
155 Seaport Boulevard
Boston, Massachusetts 02210
Telephone 617.439.2000
www.nutter.com
TCN Expert Lunch:
Maximizing Value Through IP
June18, 2013

Nutter McClennen & Fish LLP • www.nutter.com 2
IP Is A Potential Asset
•  Knowledge & Understanding Needed to
Realize Its True Potential
•  IP Has Many Uses – Build Value, Attract
Investment, Protect Revenue Stream,
Build Revenue Stream

PATENTS: WHAT THEY ARE AND
WHAT THEY ARE NOT
•  Right to exclude others
•  NOT a right to use your own patented
invention
•  A’s patented invention may be an
improvement that is dominated by B’s
earlier patent
•  A’s use/sale of its own patented
invention may result in suit by B

Case Study #1
•  Start-Up With No IP Strategy
•  Single Patent Application for a
Gen 1 Product
•  Narrow Claims
•  Failed to Keep Patent Family
Alive

Case Study #1 (Continued)
•  Unprepared for Investor Due
Diligence
• Couldn’t articulate patent strategy
•  Freedom-to-Operate Issues
Uncovered
• Reactive (Not Proactive) vis-à-vis
Third Party Patents
•  Result: No Funding

Case Study #2
•  Second Patent Application for Gen 2
• Broader Disclosure
•  Goal: Raise money to Develop and
Market Product
•  Relying on IP to Build Value – attract
investment, achieve exclusivity
•  Learned that IP Needs Focus

Case Study #2 (Continued)
•  Intense Due Diligence
• Gained Understanding of Marketplace
• Increased Knowledge of Patent Process, Prior
Art, and Use of Claim Strategies
• Able to Articulate Expected Patent Coverage
•  FTO Looked Clean
• Aware of Relevant 3d party Patents and able
to Explain Path to Market
•  Result: Successful Fundraising

Surprise!
•  Product Fails
•  Original Strategy of Successful
Product Marketing is Untenable
•  All Investment at Risk

New Strategy
•  Monetize the IP Portfolio
•  IP Portfolio Comprises Multiple
Patents
• Claims Specific to Intended Product
• Broader Claims
• Applications Still Pending

Executing The New Strategy
•  Aware of Competitor’s
Proposed Product Launch
• Market Knowledge Pays Off!
•  Build Case for Patent
Infringement
•  File Continuation With Claims
Targeting Competitor's Product
• Adds Another Picket to the Fence

Success!
•  Aggressively Approach
Competitor
•  Explain and Demonstrate
Infringement
•  Result: Sale of Company
Assets for Good ROI, without
Litigation

Takeaways
•  Initial Lack of (or Poor) Strategy Created
Risk, Facilitated Failure
• Don’t Rely on a Single Application
•  Increased Sophistication Enabled
Aggressive IP Portfolio Development
•  Knowledge of Competition Created
Opportunity
•  Flexibility & Focus Enabled Success

What Is An IP Strategy?
An IP Strategy is the playbook that describes
how intellectual property will support the
business
The IP Strategy Should Identify:
•  Offensive uses of IP – How will you create barriers to
entry that keep competitors behind you
•  Defensive uses of IP – How will you keep control of
the important aspects of your business
•  IP liabilities – How will you avoid the potholes

Why Do You Need An IP Strategy?
•  Align IP with Business Goals
•  Competitive Advantage
•  Attract Funding
•  Revenue Source

How Do You Develop an IP Strategy?
  Identify Business and Technology Goals
  Evaluate Your Existing IP Portfolio
  Know the Competition
  Strengthen Your IP Portfolio
  Track Your IP Portfolio

Identify Goals
•  Identify both business and technology goals for
company
•  Identify key players (competitors, partners, customers)
•  Identify technology direction (within company and
industry)
•  Determine offensive goals (asserting IP against others;
revenue generation), defensive goals (using IP as a
shield), and market purpose (e.g., to demonstrate
company innovation, gain funding, etc.)
•  Align the goals, industry and technology information,
and portfolio use goals.

Evaluate Your IP Portfolio
Review patent portfolio (asset/liability approach)
  Inventory IP Assets
•  Identify them – What are they?
•  What do they cover? Do they support the story?
•  Does the company have clear title to them? – If not,
they can go from Assets to Liabilities.
  Inventors IP Liabilities
•  Third party rights that you might not be aware of
•  Third party rights you might be aware of

Evaluate Your IP Portfolio (cont.)
Assess Freedom to Operate:
  Conduct regular searches
  Review all Prior Art
  Identify potential problems
  Review and assess validity

Strengthen Your IP Portfolio
  Multiple Patents: don’t rely on a single patent
  Multiple Claim Types: cover paper, bench top,
and commercial embodiments, as well as
methods of manufacturing and methods of using
  Keep patent families alive
  Cover competitor products/systems
  Cover Any Design Arounds
  Consider foreign protection
  Consider other forms of IP (trademarks, trade
secrets, copyright, agreements)

Track Your IP Portfolio Over Time
Regularly Update and Check Your Progress Against
Your IP Plan
  One good way is an IP Review Committee
•  Meet regularly, once a month to once a quarter
•  Review business model – any changes? New products?
•  Push contributors for Invention Disclosures for key new technologies/
product differentiators
•  Select which invention disclosures warrant, from IP and budget perspectives,
patent application filings and which should remain secret
•  Track competitors – any new products? Patents?
•  Identify Licensing or Partner/Consultant issues
•  Include Marking/Sales as well as CTO/Engineering Committee

IP Strategy: Track Your Portfolio
Regularly Update and Check Your Progress
Against Your IP Plan
•  Make sure your plan stays up to date
•  Is your business model changing?
•  Does your product roadmap have a new turn?
•  Are you achieving your goals?
•  Are you generating the data you need to create the
right IP assets?
•  Are your patent applications progressing?
•  Has the PTO put a crimp in your plans?

THANK YOU

Utilizing IP to Access Funding

Empfohlen

Empfohlen

Weitere ähnliche Inhalte

Was ist angesagt?

Was ist angesagt? (10)

Andere mochten auch

Andere mochten auch (20)

Ähnlich wie Utilizing IP to Access Funding

Ähnlich wie Utilizing IP to Access Funding (20)

Mehr von The Capital Network

Mehr von The Capital Network (20)

Utilizing IP to Access Funding