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  1. This Webcast Will Begin Shortly If you have any technical problems with the Webcast or the streaming audio, please contact us via email at: accwebcast@commpartners.com Thank You!

  2. Monitors "Beyond the Law" / IP Asset Management May 21, 2008Presented by New to In-house Committee and West, a Thomson-Reuters BusinessAssociation of Corporate Counselwww.acc.com

  3. Presenters: • Cheryl H. Agris, PhD, Mark Medice • The Law Offices of Business of Law • Cheryl H. Agris, PhD, PC Westlaw Business • Pelham, NY • Moderator: • Susanna McDonald, General Counsel, Director of Information, Claimant Management Systems Panel

  4. Polling Question #1 • I am the: • General Counsel • IP Attorney or Chief Patent Counsel • Attorney • Licensing Executive • Other

  5. Patents as Assets • Patents have value • Can sell them • Can license them • Can be used as collateral • Have offensive and defensive uses

  6. Agenda • Patent Uses • Managing Your Patent Assets throughout its Lifecycle • Tools • Resources

  7. Patent Uses • Offensive Uses • Generate/enhance revenue (licensing, securitization) • Establish foothold with respect to product and/or technology • Prevent others from copying product/establish exclusivity (litigation)

  8. Patent Uses • Defensive Uses • Freedom to Operate • Use as a bargaining chip with a competitor

  9. Polling Question #2 • My company • Does not have any program for managing IP • Outsources management of IP to outside counsel • Has a program for managing IP in-house • Actively licenses IP in addition to the above

  10. Disclosure • Before obtaining patent protection, the following steps need to be taken • Freedom to Operate • Patentability Determination • Scope of Patent Protection

  11. Freedom of Operation • Search currently issued U.S. and pending applications to determine if your proposed process would potentially infringe claims of U.S. patents or pending application. • If potential markets in other countries, extend investigation to non-US patents

  12. Freedom of Operation-How? • Search competitors or other players in technology area • Search subject area

  13. Freedom to OperateRobotics-Which companies prolific?

  14. Case Study • Researcher in Pharmaceutical Company proposes to Group Leader a project for obtaining a novel non-aspirin analgesic. Proposes making compounds A, B and C with a certain core structure. • What steps should be taken?

  15. Case Study • Search patent portfolios of Pharmaceutical Company Y and Z, makers of analgesics • Conduct patent search for aspirin free analgesics • Conduct search of core chemical structure

  16. Freedom of Operation • Identify Patents/Published Patent Applications of Interest • Determine status of patent application(s)/issued patents • Still pending if patent application? If so, where in the process? • If issued, have maintenance fees been paid? • Review chain of title • Determine if subject to reissue/reexamination/interference/litigation • Determine if patent has been licensed or subject to security interest

  17. Freedom of Operation • Identify Related Filings • Determine if Foreign Counterparts have been filed • Review patents to determine scope of protection

  18. Patentability • Review patent searches • Search technical literature • Consider defensive publication

  19. Patentability Determination • Is it novel? • Is it non-obvious? • Does is constitute patentable subject matter?

  20. Scope of Patent Protection • Determine scope of protection that may be obtained in view of prior art • Product claims? • Could related compounds be covered? • Method of use? • Method of Making? • Ease of designing around

  21. After filing the patent application….. • Continue freedom of operation studies • Continue to monitor non-patent literature • Continue dialog with respect to potential markets • Set up Competitive Intelligence Program

  22. Polling Question #3 • My company closely monitors IP activity: • By industry • By technology • By company • All the above • None the above

  23. Review by Technology Area – Robotics (901)

  24. Competitive IntelligenceRobotics-Which companies prolific?

  25. Competitive IntelligenceRobotics–Patenting Distribution–10 Years

  26. Medtronic 10-Year Trend

  27. Post Issuance Activities • Enforcement • Raise Revenue • Licensing • Securitization • Sell portfolio

  28. Post Issuance Activities-EnforcementLitigation Trends - Patents

  29. Costs of Patent Litigation Skyrocketing Pretrial Conference Decision 5% Markman Hearing Summary Judgment Trial Complaint 16 mo 24 mo 28 mo 30 mo 32 mo $1.5m $2.2m $2.5m $2.5m+ $3.5m Costs of Patent Litigation ~25% More Than Other Litigation

  30. Intellectual Property Business Models Source: Intellectual Ventures, LLC

  31. Post Issuance Activities • Review patent portfolio • Acquire Related Technologies • Determine whether to maintain or abandon patent position • Continue competitive intelligence

  32. Effective Patent Portfolio Management • Keep track of your company’s patent portfolio • Competitive Intelligence • Communicate! • R &D • Business Development Teams

  33. Tools • Publically and commercially available scientific (http://www.ncbi.nlm.nih.gov/sites/entrez/), business (http://www.sec.gov/cgi-bin/srch-edgar)and/or patent databases (www.uspto.gov) • Patent docketing systems • Cost estimating systems • Competitor assessment services

  34. West IP Monitor (http://www.westmonitor.info) • Provides analysis of important patent and trademark activities, applying exclusive content from Thomson, including Derwent. • Analyzes entire IP lifecycle, accessing 30 million patent / mark records from 41-patent issuing authorities. • Provides push-of-a-button insights to very difficult to gather intelligence, such as patents-in-litigation by class, company, etc. • Example Uses: • Portfolio review • Supporting filing strategies • Supporting licensing activities • Analyzing risks to litigation • Supporting FTO analyses

  35. Westlaw Patent Practitioner

  36. QUESTIONS • For Further Information Contact • Cheryl H. Agris, Ph.D., The Law Offices of Cheryl H. Agris, PhD, PC, Pelham, NY 914-712-0093; c.agris.patlaw@pobox.com) • Mark Medice, Business of Law, Thomson-Reuters 412-203-2155; mark.medice@thomson.com

  37. Thank you for attending another presentation from ACC’s Desktop Learning Webcasts Please be sure to complete the evaluation form for this program as your comments and ideas are helpful in planning future programs. You may also contact Sherrese Williams at williams@acc.com This and other ACC webcasts have been recorded and are available, for one year after the presentation date, as archived webcasts at www.webcasts.acc.com. You can also find transcripts of these programs in ACC’s Virtual Library at www.acc.com/vl

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