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Pitfalls, potential & Profit

Pitfalls, potential & Profit. The Challenges of IP Ownership. Pitfalls, Potential and Profit. What if my patent doesn’t cover my invention? H ow can I use a patent? What rights does a patent give me? What do I do about infringers? What are compulsory licenses? What about litigation?.

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Pitfalls, potential & Profit

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  1. Pitfalls, potential & Profit The Challenges of IP Ownership Ellen Hollcroft

  2. Pitfalls, Potential and Profit • What if my patent doesn’t cover my invention? • How can I use a patent? • What rights does a patent give me? • What do I do about infringers? • What are compulsory licenses? • What about litigation? Ellen Hollcroft

  3. But that’s not what I invented! • Claims don’t cover your invention • Your invention changed between filing and issuance • The commercialization process changed your invention Ellen Hollcroft

  4. But that’s not what I invented! • Finding Licensees or Buyers • List of prior art • Other (competitive) solutions • Sale • Top assignees • Auctions Ellen Hollcroft

  5. But that’s not what I invented! • Patents as Marketing Tools • “Patented Technology” • “Patent Pending” • “[X] patents pending worldwide” Ellen Hollcroft

  6. That’s Exactly What I’m Selling! • What rights does a patent give to you? • A patent is the right to EXCLUDE not the right to practice. • Most patents are incremental improvements to existing technologies. http://www.redhotplancha.com/TheRange.htm Ellen Hollcroft

  7. That’s Exactly What I’m Selling! • What rights do you need to acquire? • What prior art did your invention improve on? • What procedures do you perform to achieve your invention? http://toronto.olx.ca/wooden-rocking-chair-iid-105394187 Ellen Hollcroft

  8. That’s Exactly What I’m Selling! • How do you acquire those rights? • Contact and Request a License • Cross-licensing • Patent licensing pools • What if you don’t? • Potential for litigation Ellen Hollcroft

  9. Types of Licenses • Exclusive License • Non-Exclusive License • No right to sue • Non-transferable • An encumbrance on the patent • Covenant Not to Sue • Doesn’t run with the patent Ellen Hollcroft

  10. Assignment • Transfer of Rights • Should be for value (remuneration) Ellen Hollcroft

  11. Infringement • Someone is practicing your patent in a market in which you have an issued valid patent • Practicing • Issued • Valid • Codes: EU (nationally determined); 35 U.S.C. 154; JP Article 101 • Watch for NPEs Ellen Hollcroft

  12. Compulsory Licenses • PCT Article 5(a)(2) to prevent the abuses which might result from the exercise of the exclusive rights conferred by the patent, for example, failure to work. (3) Forfeiture of the patent shall not be provided for except in cases where the grant of compulsory licenses would not have been sufficient to prevent the said abuses. No proceedings for the forfeiture or revocation of a patent may be instituted before the expiration of two years from the grant of the first compulsory license. • (4) A compulsory license may not be applied for on the ground of failure to work or insufficient working before the expiration of a period of four years from the date of filing of the patent application or three years from the date of the grant of the patent, whichever period expires last; it shall be refused if the patentee justifies his inaction by legitimate reasons. Such a compulsory license shall be non-exclusive and shall not be transferable, even in the form of the grant of a sub-license, except with that part of the enterprise or goodwill which exploits such license. Ellen Hollcroft

  13. Compulsory Licenses • TRIPS Article 31 • Where the law of a Member allows for other use (7) of the subject matter of a patent without the authorization of the right holder, including use by the government or third parties authorized by the government • DOHA Article 6 on TRIPS • Exceptional circumstances exist justifying waivers from the obligations set out in paragraphs (f) and (h) of Article 31 of the TRIPS Agreement with respect to pharmaceutical products. Ellen Hollcroft

  14. Litigation • Expensive • Invalidation • Time Consuming • Bad PR Ellen Hollcroft

  15. Pitfalls, Potential and Profit • What if my patent doesn’t cover my invention? • Many other uses • Other than practicing, how can I use a patent? • Sale, license, marketing • What rights does a patent give me? • Know your claims • What do I do about infringers? • Know if they’re infringing • What are compulsory licenses? • Know the laws • What about litigation? • Avoid Ellen Hollcroft

  16. Thank You Ellen Hollcroft

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