Speaker 1  0:01  
Okay, good afternoon. Welcome to patent strategy, litigation and applicability for academia presented by Autumn. My name is Holly Lindgren, autumns online professional development manager and I'll be your staff host for today. All lines have been muted in order to ensure high quality audio in today's session is being recorded. If you have a question for the panelists, we encourage you to use the q&a q&a feature rather than the chat feature. It just helps us keep track of the questions a little bit better that way. If you have a technical question or comment, please do feel free to use the chat for that. Today's session might be eligible for CLE credit. Throughout the webinar, you will see pop up surveys that are simply asking for a yes or no answer. If you did not intend to apply for CLE credits, you may simply dismiss that poll as they come up. If you do intend to apply for CLE credit, you must answer the question as it is answered. It'll be left up for about 20 seconds each time. For more information about CLE eligibility for the session, or what states have already approved this program, please contact me at h lundergan at autumn dotnet. I want to take just a brief moment to acknowledge and thank autumns 2020. Online Professional Development sponsors. We appreciate the ongoing support. Now I'll introduce today's speakers. Drawing on over 20 years of computer technology experience having served as Vice President of Information Services at RR Donnelley and sons. Ed Gray has the ability to simplify technical jargon in a way that can be easily understood during litigation. With extensive experience in the areas of computer software and hardware, internet and E commerce and electronics. Ed has focused much of his practice on the misappropriation of software data and computer related intellectual property. In 2011, Edie was inducted into the National Bar Association's Hall of Fame, with recognition for professional achievements and contributions to the community and to the cause of justice during his 40 plus years of practicing law. Ed received his BA from the University of Chicago and his JD from Columbia Law School. As a partner in the firm's intellectual property practice group, Kevin curvatures. significant technical experience includes preparation and prosecution of a vast range of patent applications comprised of complex computer software and hardware, electronic, electromechanical, mechanical and chemical arts applications. Kevin's extensive experience in matters before the US Patent and Trademark Office includes oral arguments with patent examiner's and successfully reversing rejections through the appeals process. Kevin has also prepared and negotiated a wide variety of technology agreements, including licensing and joint development agreements. Kevin's experience also extends to the intellectual property provisions in government contracts. Kevin received a BS in industrial engineering from University of Missouri Columbia, a BS in electrical engineering from the University of North Carolina Charlotte, and his JD from the University of Missouri, Columbia. Without any further ado, at this time, I will turn it over to our distinguished speakers. Welcome Kevin and Ed.

Unknown Speaker  3:20  
Thank you so much. How are you? It's really a

Speaker 2  3:30  
it's really a privilege and honor to be here from both Adonai we also like to thank autumn for this tremendous opportunity.

Speaker 2  3:46  
Yeah, our talk today is going to be on patent strategy applicability and litigation for institutions of higher education and technology transfer offices.

Speaker 2  4:03  
Here's our disclaimer, Sara, disclaimer. Pattern search at Penn strategy are basically one of the primary things is determined. Why do you want to get a patent on a new development? You know, first thing you want to do is get to a patent ability search, you know, figure out the search gives you guidance as to what what's possible what is not patentable? And it's like it's a first step to see whether or not you can act to protect your invention. There are two different types. Another type is a defensive search just to see whether or not you can actually make this product without people coming after you for in Sonia for infringement. It's a matter of looking at whether there's defensive searches more looking at the claims. Either an issued patents or pending patent applications see whether or not you would run afoul of them. Those are tip usually known as framed operate or non infringement opinions of working in house is very common for a new product launch to have this done prior to every launch to make sure that there would not be no significant liability for the new product. Why search? You know, primarily one way is the poor defensive to see what is out there. Look at the claims of both issued patent and also pending applications, which is indication might issue a patent, or they focus on the full AI technology description with a patentability search, which is different. You're trying to see whether something is novel or hobbyists or what has been patented before. And so it's kind of a different analysis. patentability searches are not an indication of freedom they operate and defensive searches are not necessarily indicators of patentability. Just do the fact that for patentability search, you look at all the embodiments within patent application, and see what was disclosed, while with the defensive search, you just focus on the claims that somebody can legally sue you on. And so it's kind of a different different matter. Um, they're helpful parameters of what of searching but they're not infallible there, there can be mistakes, there can be errors in which the data is found, in some cases. Most cases with patent searches, the application takes 18 months before after filing before it becomes part of the system. So you can even find patents, you know, the two types of patents versus publish applications when it's just official issued a patent that's issued by the United States Patent and Trademark Office. And the other is the patent applications or publications. Typically, it's 18 months from the early state, you filed some type of application on the invention of most cases, you file regular application and publishes 18 months thereafter. It doesn't provide a enforceable rights to the applicant, but it does, you know, set the groundwork for potential for damages later on if you if the claim stay the same as in your printed publication. The published patent application may issue a patent and some law cases it does not in some situations require separate searches for both when you go on the uspto.gov site, you can search for both patents and patent applications you put put in keywords, and there are two different types of searches. They're kind of separate database. Yeah, basically patents, these are called to the term they use his prior art, and which is what he's prior patents and publications just to see, what you would use are the applicate application process when you file your patent application. They're searched by the patent examiner to see whether or not what will add patents and prior publications are the most appropriate. In addition to other types of publications, various types. Defensive searches are just a primary look at patents. And published patent applications are irrelevant, but they're just kind of an indication what may come. I typically use keyword searches. That's kind of a of modern way of doing in some cases, though, for very high quality search, you have like former patent examiner's who actually go and search in certain areas. And some cases just look at the different patterns that are there rather than just keywords. But for most patent databases in this day and age, you can use key words. The key to keep in mind though is in some cases in foreign countries they use like first different mechanical cases, you can have the exact same terminology. I mean, you can have the exact same item mechanical item, and where there's different terminology for that same item. And you wouldn't find it with just the key word sne searches is a different way of searching. A lot of times there's different holes in this process due to the fact that people don't always keep their records up to date as to who owns the patent. Sometimes, there's law of acquisition activity. And so people don't always keep up with that. And so it's really tried to challenge also, you might not always know legal and they sometimes their companies have various patent holding companies and things like that, that aren't readily known are available. And so it's not always a very simple matter of finding all the patterns that are typically for searching you, you can there are two ways of doing it on the US Patent and Trademark Office site. You can kind of do what's called the Advanced Search you put in capital A capital N, forward slash and advanced search and put in different names. There's also a patent Nasrani database that you can use any kind of search searched through it that way, and come with searches. So there's there's two different ways to approach that. Another way of searching is you can search through a classes and subclasses. You know, they have classifications kind of analogous to the Dewey Decimal System in the library system. And so they identify different technologies have different levels. And so the, they're categorized, large general areas of technology, and then they have subclasses within those classes. And so that way, you can kind of get a real good feel if you start searching that, what patterns are out there. And so you can search with a different class, typically use the CCL, all caps Ford slash wheel in the advanced search just to come up with different classifications, so you can kind of figure out what's there if you want to search by either class or sub classification. Here's the advanced search options. And basically the searches combined keyword searching, Eseni, searching, class searching and kind of put all these various things together, there's items like give us $1 sign at the end, it's a camera right truncation, which means that everything that follows after that would also come up in the search. So it's not cutting you off at exactly that word, or whatever you put in there. So you can see from the example I like Amazon, where then the dollar sign and you would come up with all all the possible Amazon, there's numerous Amazon entities, you'd have all the different ones separate queries, need search both the patent database and the published database. So like I said before, it's kind of they have two separate databases that are are their strategy, patent strategy considerations, there are a number of them that you need to keep in mind, if you're, when you think about filing patent applications, I who actually owns the patent, you know, you want to make sure it's people in your entity, or you can get all the rights to that. So you have ownership. So that's not a controversy, who's potentially infringing it. Are there potential infringers out there, what, what market share, you might lose if somebody's infringing? So those are some of the things most companies kind of go through that analysis? How valid is enforceable, you know, sometimes you might have, you know, extremely valid patent, but it has commercially very little usefulness. And so you have to kind of balance that out other other situations, you have something that's extremely commercially valuable, but it might be just marginally patentable. And so it's kind of a way you have to weigh all that to when you're making your decision, whether you want to file, are there any encumbrance on the pen? Do people have any liens or anything else in the past and kind of figure figure that out? You know, based on commercial arrangements or commercial arrangements with various banking institutions, sometimes I've seen patents that have dozens and dozens of different banks that own part of it. And so it's a question kind of knowing what's involved and who owns what, to see what rights you have to make, so that filing for a patent would be provide value.

Speaker 2  13:09  
You know, it's a transferable, can you transfer the patent? Is it valuable? Is it something you can license to somebody else? Is there intrinsic value in that, so both licensing inside and outside and how easy it is to transfer to potentially either another entity or maybe even, you can even sell the patent? So kind of look at all examine all the commercial possibilities, before you file it, just kind of think in your head what, you know, come up with its true value by considering all the commercial considerations. Also, what foreign rights do you want to file. You know, just because you would get a patent in the US if this is a global market and your biggest market is in Europe, that's those are items you need to consider and whether you want to file, what type of patent you want to file. Like there's a PCT application buys you time, so you can preserve your rights and numerous countries throughout the world. So you want to kind of keep that in mind, you know, if you've got large global market versus just something that's valuable in the US. And so the bottom line is just how valuable is it by looking at all these various different parameters? Well, Patents You know, they protect novel inventions. They encourage people to invest in new technology and designs, prevents competitors from stealing your inventions you come up with invention and someone who's more highly finance you know, if you don't protect it with the pen, they can you just come in and copy it and have a much bigger market base to kind of launch from and so and so let's see basically and also keep customers from shifting your competition so

Speaker 2  15:03  
Let's say types of patents utility patents are, they expire 20 years from filing. There are products and other articles of manufacture, there are machines chemical compositions, methods and processes. Another type is a design pattern that just covers the orange ornamental appearance, and manufacturing those expire 14 years from the grant. But it's just based on the design, they're very common in tennis shoes, and a lot of other areas where the ornate ornate features artistic features are what you're trying to protect with, basically, based on the drawings that you have, versus how its structured, or how the actual wood operates. It's more of an artistic aspect to it. Other patent issues or ownership information, you want to start your company and make sure it's you transfer all your intellectual property to the company, I can be all everything, things beyond patents, after formation, assume that you've got agreements where employees have to kind of assign it or if you've got contractors, they they're obligated to sign the invention. So we mean, you want to have that all tied up, the last thing you want is some issue where you've got a great invention, but there's a bow and banner on the patent or even the Solon better, you have no rights to that. And, and so you want to get that done before this thing becomes super valuable. You want to make sure everything is tied up. So when people who are in bending for you actually can provide value. Also, just if there are any liens or security agreements that would appear for the patent, make sure if you're obligated your bank to kind of put a lien on the pan, make sure you're aware of that. And that's part of your process and strategy as to what the value would be in the pan. Let's say um, other strategy considerations would include seeking patent protection, you do the search, see if it's novel, not obvious, look at this subject matter, things to keep in mind as you have less than one year from your first public showing or public disclosure, or commercial use to file your US patent application. And enforcement law. Foreign Countries like a lot most countries in Asia and also Europe, they have what's called absolute novelty, which means that once it's disclosed anywhere, you could lose your rights. And so you want to keep that in mind. If If Europe and Asia are important part of the commercial value the invention you want before you do anything, you want to have at least one patent application one country file so that you could kind of protect yourself on that you want to examine the foreign rights in the US it's first to file now also, you want to make sure that you're you know, file first and you don't kind of sit and wait on the application, it's kind of a balancing test, you want to typically you don't want to file too early, you know, before it's just a rudimentary concept that you want to make sure that, you know, if you get competition or actively failing in this certain area, you want to kind of go after that. Also the freedom to operate aspect of it, you want to make sure you look at the infringement risks before you kind of move ahead and see whether you're looking into a large patent dispute or you know, or there's going to be a lot of issues, you know, with that new product. There's a lot of places you can get information. It's not just the US spto.gov website where you can search for kinds of publications as public domain data. There's commercial data sources, industry organization and trade shows, there's competitor websites, all that could provide. You know what I mentioned before, it's prior art that would kind of effect the patentability, whether you have something that's novel and non obvious over something that's been gone before. And those are all places where you could find that kind of information. People don't always go the patent office, in some cases, they rolled out commercially and kind of waive their rights. And so those things are still out there, and they still could be presented, that would prevent you from having a valid patent if they're out there. So a good comprehensive search is always recommended. Right? Here's some likely uspto.gov I mentioned before, here's where the like a piece CT website, which has the Patent Cooperation Treaty, which I referenced, which is kind of a large, you know, filing on an international basis that doesn't grant you a patent protects your rights. So then you can have a placeholder where 30 To 31 months is typical timeframe, where you've got that time to develop your product, see if there's commercial interests, and then file on so that's another place you can find prior art. Let's say some of the strengths and drawbacks I Uh, two patents, patents and patent applications is there's shows us there's a series interest in technology once you file a patent application, a lot of times there's information with patents and patent applications that's not available anywhere else. It's well organized because it has to be done in a very logical sequential way. And however, there is a delay from when it appears, like I mentioned before, there's typically that 18 month window, so you don't know exactly what other people have. You can search by owners, you can search by the inventor, and also the subject matter. There's a lot of useful information you can glean from patents and patent applications like the good in better information, the s&p information, the filing date, subject America on the classifications, the references, they're cited by references, it's whatever patents or publications that were found, you're obligated to disclose that to the patent office. And so all of those citations are cited, and also cite subsequent citations, which means that other people cite to this patent in some cases. And so it shows kind of in the interest, kind of in the technology. Here's kind of an example from a patent application, you can see all the various data was filed as went through the PCT process, which I just kind of referenced before. And it gets the classifications it shows. And then it shows the patent documents that were cited as prior art in this case. Here, we've got the classifications international, national class, the field, the search, is this a new technology area would tell you, you can kind of you're able to do some research and figure that out, is it broadening or narrowing technology compared to prior patents. So there's a lot of things you can glean from the pattern. You can also times determine the number of references that are cited, how crowded is how many other patterns that are there, they're pertinent to patentability that you have to cite to the patent office to get your pen. What the dates are, things like that, it's a very hot area. So there's a lot of things to look at pattern counts, you can kind of tell how many like as an entity, you know, how many patterns someone's getting, you know, or if they're developing a whole family, by family, a certain invention, you have a lot of related inventions that are very close. So you can kind of look at that whole family. Because typically what companies try to do is build kind of a wall, around a certain area of technology makes it much more difficult to infringe, if it's not just one patent they would have to invalidate. But there's also have a body and new, numerous aspects and some really good technology, especially if you're a license or I was involved personally working for a company where had an international licensing, we're always adding new developments from engineering, because it just enhanced the value made it much more valuable. If you're receiving royalties back. The licensee wants to know that it's a developing emerging technology that you're keeping up to date, and you're putting effort and research and engineering into it. And so that's an issue. Now, there's also citation analysis you could look at, and also the renewal rates, some cases, you know, patents have to be renewed. You know, there's annual annuities overseas in the US there's, they have basic maintenance fees have to be paid for year intervals. And so you want to see if it's renewed, have some kind of certain areas aren't being renewed, syndication, maybe the technologies become obsolete. And so you have patent counts this kind of it. It's a temporal thing. It's like what is a certain period of time, and you can compare that to what like competitors are doing or compare it by technology. Just as an example like this, I saw gel technology, you can see various companies. And here are some of the areas they have, it's all broken down a lot of times or they're making class structures and things like that. This is a solution gel process. So it's kind of converting and dehydrating. So in some cases, they're making glass some cases they're making other electrical conductors, whether using the process ceramics, and so different companies do different things with it. And it's kind of fascinating you can can see exactly how it's broken down like court coordinated incorporate, as a wide variety of things are using this technology before while Seiko Epson is just more of a limited number. Let's say the patent family analysis is a lot of things to look at here is what's the competitors strategy, you can kind of see that how they're filing economic potential you can see how many patent applications are filing and that shows their economic commitment and also the engineering commitment, not just monetary. You know how many patents are willing to have pay for but also just how much they're willing to pay by way of resources, measures the technology, technological add activity, also the number of unique SMEs a certain area, how many owners of certain technology are in this area, they're kind of unique and different and what have you, if you see a lot of new players in a certain area, you can really tell it's a really hot area, and kind of what the lifecycle is to you, if people aren't keeping their hands up. If there's like a big swell during certain years, then it's kind of dying down, you can kind of see it's kind of diminishing, just to kind of an example that is on the slide here, you can kind of see, they have certain lists, kind of the activities. And so how it's kind of building up in certain areas. And so if the, the first part of the cycle is the emerging cycle, where the activity is low and kind of increasing, but the concentration is high, so you're playing, but it's not a tremendous amount of activity. And then in the growing phase, there's a lot of activity, but the concentration is less concentration, it's kind of spreading out a little bit more, as far as the technology is not one little area close to, let's say, your invention, it's kind of broadening out and maturing, everything's kind of more stable, both the activity and the concentration. And then when things start to go become obsolete than the activity, the patent filing activity is decreasing, the concentration might be high, or increasing, but it's kind of a kind of on its way out. So you can kind of tell a lot.

Speaker 2  26:38  
Just looking at the Pan counts and what's going on. When you look at competitors and, and where the pans are in certain areas that you're interested in, you're trying to pound you can no i catalyze the citations very helpful, you can see areas are really hot will have just numerous numerous patents and getting the patents are so much more difficult because it's you have to find Kansas niche where it's novel and obvious over, you know, in some cases could be dozens of patents that have come before. Now the case is more wide open. So you'll get this references they're cited. And when it's cited later, when people kind of start citing, let's say your patent back, that means you've got some very interesting technology that people are wanting to get patents really close to that. Let's say, for patents and patent application analysis, basically, you are looking at the references side, you look at the number of cited, you look at the dates when they're cited, and you look at the owner. So those are all three things you will look at, to kind of really analyze for patents and patent applications. Also, the timing of the subsequent site citations is a measure of importance of all of a sudden you filed this. And all of a sudden, it's really building up where everyone's citing your pen, the patent office means it's pertinent to, for them to get a patent that's novel and obvious over what you've done. It means for a lot of people are doing that exact thing. That means there's just a tremendous interest in your technology. And they feel that in order to get their patent, they feel yours is so close, that it's something that's germane to the examination of the patent application, their patent application. And so when a lot of people do that means you've got a very valuable technology. And it's a strong indication that you know, it's a very much of a growth field. And so you think yourself, do we need to be patenting more we pad need all the right things, when you look back as a, as a strategy you are, you know, what I try to like tell clients is you want to build a fence around your technology and build as broad as possible. And you try to keep people out and you want to strategize as to like if someone's trying to copy of your great invention, what are all the different ways they might try to do that are going to stop substitute materials? What other ways can they do it if it's a mechanical device, but other type of mechanical mechanisms within that invention can be substituted? If it's a chemical, when other chemicals would suffice? That would provide a comparable reaction and achieve the same effect. And so it's kind of like you have to kind of work with the client to kind of you have to work to kind of put out a strategy that would kind of say, you know, what can I do if I were someone trying to steal this invention? How would I do that? And so, you have to approach a totally different matter. Also the technology cycle time and you have those big huge sudden growth, but then kind of dies out is that technology like in some cases, electronics that technology becomes obsolete after you know a relatively short period of time, especially in electronics things are constantly being superseded. So you want to figure out what this cycle Time is just a real short cycle time, you may want to think about if there's other ways of protecting the invention and how valuable the patent might be, just because of its if it's obsolete, prior to even being examined that that could be a problem. Also look at the particular area technology. Some cases, it's not always well classified, and look at, you know, the searchable fields and things like that. Just there's a lot of aspects, you can search by different categories. So if you go into the uspto.gov site, you can kind of search on a lot of different aspects of it gives you a lot of information, what else is out there, what your competitors have out there, what's comparable, and it's all valuable information. So you can see exactly what you're doing versus what other people are doing. If you're all of a sudden, in an area. And all of a sudden your your competitors like filing numerous numerous patents, he'll realize that, you know, that's an area maybe your r&d needs to spend some money on, and kind of keep up with that and file more patents and things like that. So it's always something good to track and kind of figure out. Here's other types of non patent references. This is a PCT application, you see here, there's a couple listed on non patent references, you can search by inventor, author, institution. So there's a lot of different ways of looking at, here's some of the examples that you have. There's some various articles and things like that. Just giving you example, a lot of publications, especially in biotechnology, there's a lot of things are in the medical fields, in different inventions, you can find that a lot of that is published, you know, it's not always patented. So it's a, it's a very valuable resources. Also, there's a lot of things sometimes in trade shows that occur. And so you can kind of you can kind of develop, you can kind of see that. And so basically so here's an example. This is a automobile industry, I advisory group show, and you can kind of see, it's like a press release. And so sometimes you can find information just from that, if there's enough

Unknown Speaker  32:25  
you can find that and do that.

Speaker 2  32:35  
Let's say also, you can find blog, we get information on competitor websites. So here's just kind of an example. And they they talked about different things they publish, you know, a lot of people just kind of publish things and what have you, especially educational institutions, it's, there's still a lot of publishing. First, it's a paramount thing, sharing the results. And so sometimes on websites, both for, you know, educational institutions, as well as other types of institutions and companies, you can find a lot of good information. So this is an example right there. Why pants are important, it gives you a statutory right to exclude people from making your invention provides a competitive advantage, you can get licensing revenue from it provides a defense mechanism that would keep people from suing you for putting out a new product. They can the bottom line in solid cases, like when I work with startups, it's like their asset and provides a tremendous amount of assets. So they don't look, if you have marginal sales, and marginal assets, you've got a really great idea that's kind of taking off, people are willing to pay more for that. And a lot of that they can ascribe to the goodwill to the intellectual property that you've got an actual tangible asset that provides something that you can put value on. And so because you're able to protect, you're able to exclude other people from copying you, and you've got a unique concept that can provide you more value to your organization for an investor than would be if you just had a kind of a rudimentary company that had no intellectual property. And they'd have to just look at you know, what assets you have and what sales you have. You know, basically kind of the, the determination is it you know, like, we kind of touched on before what is it new or novel? That, you know, do you know, of anyone else who did it is a useful this in some cases are some great inventions, but they don't provide, they're not really that useful, or even if they're useful, they might be too costly compared to what comparable things are done before. You know, is it not obvious that's the other criteria the patent office use, and you have what depending on what other people with someone with ordinary skill in this area, kind of look at? What's been done before and look at prior or prior artists we talked about and say, Well, gee, I'm not going to find a lot of, it's not going to be a big change. It's basically taking what they've done. And just kind of maybe combining two things which anyone skilled that array would have done in the patent office would try would reject that. And so you have to show it to someone with ordinary skill in the art in that area. Would this provide a competitive benefit? And would you, you know, would you pay money for it, we did consumer pay money for it, you know, just in some cases, you want to maybe do some marketing to kind of figure out, you know, test study, see, see what people were, how they react to him, they'd be willing to get, get money for that. Some cases, like I've worked in house and caterpillar and other places. And basically, one thing to look at sometimes the best inventions are actually the kind of the smaller, rudimentary things that take place, like someone in the shop and things like that. It doesn't have to be, it's not always the light bulb, it's something much more rudimentary. And so could be just everyday activities. And so the key is to kind of track that you have mechanisms in place in your tech transfer office, or other places, or institution that kind of track what people are doing. So you can kind of come up with that. So first you, you track what you're doing, take records of it, preferably, like have lab notebooks and things like that, where it's witnessed and signed, and you go through a process where you have a second person or at least one person witnessing what you've done on a regular basis, it's in a form that can't be modified. So even if you went computer, you'd have to have some kind of system where no one can go back in the system and alter the records, it would have to be something couldn't be altered. And there are some kind of there are computer lab notebooks available. But it's very, it's a unique software, which prevents you from actually going back and changing it. Next is developing an invention disclosure form. And then they have a patent review committee, it's good to have a variety of people in the organization, that's just one person make the idea. Look at it from all different perspectives in the organization, you know, what's the value, what it would be to the organization from marketing perspective, from different product launches from, you know, there's numerous, every aspect of the company, you know, could be environmental, I've been in situations where I sometimes you've got a great invention, but it'd be a huge environmental hazard, let's say, you can't move forward with that. So that's kind of an issue. Issue there. So those are you have a good solid patent review committee, where you have people who in the organization who are stakeholders who have an interest, provide their input, and you want people from a variety of different viewpoints, you know, diversity of viewpoints to make that and the fourth step is kind of once you've had review committees approved, and you submit that to the attorney and provide that information to the attorney, things you want to avoid is any types of filings or doing any type of disclosures outside prior to your patent application filing date, keep mine any commercial use or public disclosures are not confidential disclosures will start this one year clock in the US and that prevents you I mean, the key is the patent laws are drafted. So basically, you can't just sit on your rights and wait till it becomes a multibillion dollar invention, then go file a patent applications, some cases, you have to kind of strategically make a decision early to figure out whether there's a value. And so in the US, you have a one year clock, and like I mentioned before, in Asia and Europe and love other places, they have absolute novelty, which would prevent a valid patent immediately. So you want to get that patent application on file. Always look at outside issue, ownership issues, when you're dealing with outside parties, make sure everyone signed up your consultant, they have to sign all their invention. If you're an employee, they have to sign their invention. So make sure that's kind of as an organization, you've got that kind of locked up. So there's no huge surprises or controversies when you have all of a sudden you have three and banners and, and one of them, you know once the invention doesn't assign it to your organization, it can be a real costly nightmare. Sometimes their standard setting organizations, activities which require certain for certain technology that the technology kind of has to be used and belongs to a certain group and so make sure it's not something that like Bluetooth is one there's a number of these different standard settings where if you belong to this organization, your patent kind of something that has to be used by them. You will know that upfront and be make that part of the analysis. Make sure he'll Look, see whether there's a confidential, there's some kind of disclosure, see if there's a confidentiality room or non disclosure agreement. If there wasn't a that starts the clock and could sacrifice foreign patent rights basically serve filing a sale before a commercial sale. There is an exception where you can use a laboratory where it's experimental use. But if you're actually selling a commercial level, then that starts the clock for this disclosure the same way if you had published it, or, or disclose it. So in some cases, if you're using software, inside the business, and you use it for business and customers and things like that, but it's still seen, that's still deemed to have a commercial use versus like research lab, software lab, and just use it inside the lab to test it out. In an IT lab, let's say, you know, and so basically, you know that, like I said, before, you've got that when your clock, that could happen. So you want to make make sure you don't trigger that in any way. So you want to have always non disclosure agreements, you don't want to be selling, whatever you want any use, you wanted to turn all experimental, you want to no one looking at it, no one who's not authorized to see it. And so you can end up dedicating your invention to the public. And also that the foreign rights can be lost immediately. So some cases, clients willing to accept that because the US is the major market and they sacrifice the foreign rights. But always be aware of that and don't waste your money and be very forthcoming with your attorney, because you don't want to be filing for an extremely expensive in most cases. So you don't want to take on the expense and then go back to your attorney years later and say, Well, yeah, we, we had this disclosure, now it's all invalid, it's always good to get that information up front. You know, with foreign patents, like I said before, they don't provide the one year clock.

Speaker 2  42:08  
Make sure you filed US patent application for any non confidential disclosure, commercialization. Commercialization occurs, the US and they have what's called the Paris Convention treaty. And that gives you a one year window in which you can file for an application. So even if you don't file overseas, you don't have to file on Europe, let's say if you want Europe, you can file on the US side, that gives you a one year tip period of time. And then you can either file in Europe at that when your period of time, or you can do that PCT application processes, which gives you 3031 months depending on what country in the world, and it's gives you kind of countries throughout the world that are part of that treaty. And that gives you a you know, a significant period of time, you know, to kind of see whether or not there's a commercial interest in the thing before making any investment like that. Especially with the development of code, software codes, make sure these outside vendors are tied up with the agreements. To make sure you know, all the employer, the owners of all the patent rights coming out of the work. That's a huge area where sometimes companies hire these people, and they don't have all the rights secured you anything you want to make sure is don't try to maybe incorporate other people's software I use, I've seen situations where people want to take, like commercial software, and they think they got a license because they're they got licensed, but then they want to convert that into some kind of commercial product. And they don't have a license to do that at all. And so you have to kind of make sure that in some cases, the software, there could be a wide variety of different rights involved. And so you want to make sure that that's handled. And so there's a quid pro quo with the patents situation, basically, you know, in order to get a ballot monopoly that you have with a patent, you have to kind of make sure that once the patent expires, that someone can look at your patent application, have enough knowledge there to actually make your invention. And so when the patent expires, and so that's kind of the trade off. So you have to have what's called an enabling disclosure, which shows how the invention works. You have to have a full written description of exactly all the components, how they're put together, how it would operate, if you if it's a mechanical device, how you turn the crank, how the parts interact, etcetera, how it works, then you want to put in the best mode for carrying out the invention you can't have something that's commercially not feasible where all the time you're sitting on kind of the best way of doing it and then expect to go out and successfully sue people let's say the standard for enablement. You know what an ordinary skill in the art would you'd make the invention without undue experimentation? If you must describe in detail how the invention would work and implement it, you don't have to build the invention. You don't have to have a prototype, it just must describe enough detail how someone could make the invention. You want to have flowcharts diagrams descriptions, exemplar uses any other details, alternative arrangements, like I said before, you want to build that fence of everything possible you put that in there. Flowcharts are kind of really crucial almost in software applications. You also end uses and in the invention disclosures and other things to consider. You want to put in what the end uses who the customers would be, but industries are filled with have a need for it. What they was you was the invention conceived of that can be helpful, in some cases, what evidence you would have like notebooks, computer files, etc. It's better to have ones that like I mentioned before, that couldn't be destroyed or altered in any way, because you have to bring evidence in AI has been reduced. The practice has been built, you know, don't destroy any evidence you have. Have you public disclose that make sure you put that in there. Otherwise, you're wasting a lot of money in the patent process, if you have disclosed, let's say years ago, but you don't have that. Even that one year. You You do it earlier that one year. Are you aware of any publicly disclosures, any statutory bars, make sure you look at all what's confidentiality agreements before with who disclose things to and aspect for the Lookout is who's who should have some kind of a nondisclosure agreement in place, etc. Make sure you go and track that down and figure that out, has been offered for sale what the early states been offered for sale. These again, kind of at identify the statuary bars as the been used to identify or produce results for our customers, what's the earliest date for such activity? This you know, help you can determine, you know, with any kind of statutory bar, who are the personnel involved, you identify him because people leave especially in universities, and they go and so who are the people involved and what rights you have what agreements you have, so you so they don't disappear. A lot of times at the university, sometimes people go to foreign countries and things like that. It's tough to tie them up. So he was make sure there are agreements up front. And so next on my partner, Ed is going to be talking about litigation, finance and litigation insurance, a joint strategy discussion.

Speaker 3  47:42  
Hello. Uh, Kevin's provided a wealth of information. And some of the considerations he's provided may seem to apply more to your licensees than to colleges and universities themselves. But that's the point of mentioning it, because being aware of the considerations of your licensees, and the things that impact them, will help you assess what are the most valuable assets in your portfolios. Today, we're going to quickly cover these questions. What is litigation finance? What is litigation insurance? Are they new? Are they here to stay? And how do they apply to university patents? First, litigation finance is a risk sharing contract, in which the three parties share the risks and rewards of an expensive patent litigation or other expensive case. Next slide please.

Speaker 3  48:54  
Typically, the there are three parties to the litigation finance contract, the funder or litigation funder, the lawyers and the client. The client controls the case. The funder provides an agreed portion of the legal fees and costs, and the lawyers provide their services for a discounted fee. If the case is successful, and a recovery is obtained, the parties share in the recovery in accordance with a predetermined formula. Now the full discussion of how the predetermined formula works is well beyond the scope of this presentation. How negotiating these deals is complicated and requires sophisticated advice. Now litigation insurance is an an even newer financial product, which I insurers against several risks, such as a reduction and judgment awarded in your favor. Frequently litigation, finance, and litigation insurance can work together. Now, these are new financial services. They've all been developed really in the last 10 years, and are still evolving. So if you haven't done litigation, financial education insurance yet, don't be embarrassed. It's new in the marketplace. Now, and contrary to a lot of experience that lawyers developed over the years, where it wasn't possible to get a third party to finance a case, without violating long standing, even ancient legal principles. Well, that's changing. And even though there's still some controversy over litigation, finance, it appears that it's here to stay some away with litigation insurance, and billions of dollars, not millions, billions with a B, have been invested by wealthy people, such as family offices, insurers and others. In financing, complex litigation, that has an above average likelihood of a payoff. And the payoff in the minds of the investors offers the opportunity of returns that exceed what one can get in the stock market, or other conventional investments. And that's why they are interested in providing this financing. Now, what to do. So if you have a patent portfolio, and you're aware of assets with that, in that portfolio, that you think could be asserted against solvent defendants, and perhaps secure recovery, you should take a look at those assets. Because they may have value that goes well beyond their value to the university. And if one has such assets, you will find that not just one or two litigation funders will be interested in hearing from you. Next slide. The litigation funding is a business and it can only succeed when they have are investing in high quality assets. Now, the end buy high quality assets, we mean assets which are capable of generating awards. And, you know, in the five to billion dollar range, I mean, in other words, you wouldn't do one of these for a case it has a small upside. These are very expensive undertakings. Now, one of the leading litigation finance firms is called Parabellum. And we've included in our package, a description of litigation funding, as supplied by parabola, and we're not recommending Parabellum. But we want you to be aware of what is available on their website. Next slide. Another litigation, one of the reasons people go into litigation financing and use it is that they made themselves not have the financial wherewithal or willingness to use their financial wherewithal to invest the millions of dollars that are required in a successful patent litigation. And I know it will sound self serving coming from a lawyer but there's lots of data to show that even an average patent litigation, litigated all the way to trial can easily cost three to $6 million. Very few colleges and universities want to bet that kind of some even when they're being encouraged to do so by their faculty who are sponsoring this particular invention. Next slide. Now, but litigation funders like universities, and the slide that we have before us prepared by another litigation funder Catarina strategy with which we have deep experience, and they liked the idea of investing in university patents because They think litigation or a strike that university inventors make very good plaintiffs at trial because they understand the technology. They come across as sincere and, and factual to juries. And there's virtually I shouldn't say there's no risk of counterclaims, but there's much less risk of counterclaims. When a case is bought by a university, who is perceived as having the public interest, more in mind than the typical patent plant, also the recoveries that you obtained, go back to benefit universities and their professors who can then go on to make additional contributions. So then concluding, litigation, finance and litigation insurance are important. You need to understand them. They're here to stay. And they want your business. So I hope if you guys want to find out more, you'll investigate the many articles and material that's available on the internet. And then of course, we'd be happy to supply other information as well. Thank you very much for your time and attention.

Unknown Speaker  56:36  
Are there any questions?

Speaker 1  56:40  
Okay. Thanks, guys. We do have a couple questions. There was one that I believe as you started to answer it was are there any database or analysis software you use, in addition to the USPTO. gov site? And in the follow up was, was there any that you would recommend?

Speaker 3  57:01  
Well, there are there are several different, discreet US Patent evaluation software packages that are published by a number of leading patent search firms. They're all similar in the sense that they try to get it the same way of kind of simplifying the effort that Kevin talked about, I don't think one is distinctly better than another. They operate, you know, with fair similarity. But you'll find that until you're an experienced user of the systems, they're very difficult for a person who's unfamiliar with them to extract maximum value. You also there is a limit to the the sophistication these systems offer. And so when you while they may help you narrow down a search among 1000s of patents to 10 or 20, then what you want to focus on when you get down to the to the deep dive on the narrow list of patents, you're going to want to obtain advice from an experienced patent attorney, such as Kevin to, you know, to really drill down on what's important about those those particular 20 patents and to rank them.

Speaker 1  58:34  
Thank you jumping on the questions too fast. Kevin, do you have one more segment to present?

Speaker 2  58:40  
No, I do not. Okay. Just wanted to make sure I did you finish everything you want to talk

Speaker 3  58:45  
about? Or? Yeah, I think I hit the highlights if.

Speaker 1  58:50  
Okay, sorry about that. All right. We'll go with a few more questions, then. Are there any examples of universities using litigation financing that have been successful in their suit?

Speaker 3  59:06  
I am. I'm not aware of specific examples. But I would be delighted to obtain some and revert on that. I'm sure there are given the level of interest I obtained from the litigation financing folks I talked to they're, you know, they're very practical people. So they're there. I'm sure there. There's precedent that's favorable to their interests, or that explains their interests. I'd be delighted to get that are the big question.

Speaker 2  59:40  
And it does seem like university litigation is becoming more popular. There are more cases and things used to be. There's very little less litigation with universities. And now it seems like they're more aggressive in protecting their intellectual property.

Speaker 1  59:57  
Great, thank you, people. Questions? Are you familiar with any cross reference free search tool?

Speaker 2  1:00:07  
Um, you for cross referencing different patents like comparable patents, I guess. I mean, they have a number free search tool, I mean, addition, the uspto.gov. There's a Google Advanced Google patent search. And you can get patents all over the world with that, that's for free. Let's say sometimes Nirach isn't free, but a lot of times various organizations and institutions get a corporate membership, and then, and then it's free to use by the members, I guess. As far as other searches and stuff, there's one called East space, which is, has a number of European patents and foreign patents and things like that kind of, its kind of used for a lot of European patents, but also has, like the global family. And so they will also recite US patents and Australian pens and pens throughout the world. It's not comprehensive or failsafe, but it is a helpful thing it's called East bass is that one that's also free.

Speaker 3  1:01:17  
The, if I could just comment, so some of the proprietary systems, and I think there are at least seven or eight leading proprietary systems, they're all they all use various kinds of cross reference, seeing techniques. Now, some of the, the, the order in which they rank, the cross references and or the weighting, you know, may vary somewhat, from one to one. But I think one of their big strengths is they are fast, you know, once you load the data into the system, you get a result pretty fast, that is designed to be displayed graphically. And so some so if you're in a situation where people are asking you to explain the ranking of patents in a large portfolio, or to compare the patents in a portfolio against a large industry group, where there's, there are also lots of patents, it can be an efficient way to make a complicated process like that easier. And so that's something people should consider, and what are their needs? Do they just want the answers? Or do they want to be able to display those ads answers in a in a attractive, easy to understand sort of query automated presentation way.

Speaker 2  1:02:34  
And like Google Advanced Search, sometimes, as far as cross referencing, they, they do let you click on different patterns, and you cross reference other related patents Patents that were cited in that patent or patents being cited by that patent that were cited during the course of the prosecution. So you do, you do obtain that, you can also go back to various prior applications and things like that, especially with the USPTO. site, it's, it's called pair pir. And so it's public parrots call. And if you go to that area, you can actually put in, once you find a patent you on then you find all the related patents and things like that in there. And then also, on the publication, you can kind of click on all the references to other patterns of either cited during prosecution, or you can see where else it's been cross reference.

Speaker 1  1:03:32  
Great, thank you. Let's see, are there certain types of patents that are harder to get granted or defend than others?

Speaker 2  1:03:40  
Yeah, I mean, in some cases, like, patent office breaks everything down so that when they hire pen examiner's they hire experts, technical experts in every possible field in which there's technology. And so they have have a wide variety of backgrounds, you know, they have people with electrical, electronic, mechanical, every subgroup, they've got the technical expertise in that area. And so in some areas of it's relatively simplistic, mechanical case, if you don't expedite the process or file, you know, file additional fees to expedite your mechanical case you might be examined, could be 18 months, you might actually get your first office action. In other cases, like in the biotech area, or in the electronics areas, sometimes it's much longer and it's it could be even three, four years, just to the fact that you know, it's just a function of how many people then get in that area. It's, most people are much higher demand. It's and, and so takes there's a bigger backlog in different areas. So it takes it takes longer as far as the actual patents themselves. Community has been struggling a lot of times universities focus on more The pharmaceutical and the chemical was just because once you have a chemical formula, it's unique. And it kind of stands alone, excuse me, well, pens and other areas in some areas like similar tronics, and things like that. It's much more, it's a little bit more amorphous as far as you have got all this technology listed. And what is that prior to termination, I talked about what is obvious to someone with ordinary skill in the art becomes much more critical, because a lot of times, there's a lot of things people have done either in patents or they've published you know, about electronics. And so it becomes more difficult sometimes, to make the case that it wouldn't be obvious to someone skilled in the art, because there's so much more out there. It's not like a chemical formula where you can see a certain structure, and that's the only, it's unique. And certainly people have that. And so sometimes you do see a lot in tech transfer offices, educational institutions, it's more a focus where, you know, it's, it's a clear standalone chemical formula that's unique. And so it's a lot easier to kind of prove that and make a case for that. And it's so that I would say that's a little bit easier, so to speak. But it's kind of like a function of depending on how busy how you can have a wide variety of areas, and you'd have areas where so many people have patented beforehand. And it's very complicated. So, and the differences are very nuanced between the inventions, you have to make a case of why it's novel, not obvious over what's been done in the art, it's a much more difficult process to do that in some areas. So it would make it tends to make the, in some cases, the inventions more difficult to prosecute, and some are weaker, just do that. You're patenting some nuance of a difference, as opposed to being kind of the first one in the field. And so that does make a difference. So it's not necessarily always the technology just could be an area where there's just a lot of activity in work in a certain areas. So in some cases, there's just like, plastic bottles, or you name it, where there's just a tremendous amount of art in certain areas. And so we call that a crowded field. Yeah. Right. And so you have to really, it's a matter of how competitive it is, and things like that, that would make that kind of determination.

Speaker 1  1:07:30  
Great, thanks. I think we just have one more question, and then we'll close it out. How do we know when and if litigation financing is a path that we should explore?

Speaker 3  1:07:43  
Great question. They, it would be helpful, if you would have formed some opinions, you know, from your own decision mechanism, and deciding whether to seek a patent as to what you think have the most value. But you will, you know, with a limited discrete number of patents, you will find patent lawyers who will be willing to invest the time for free to help you evaluate patents that appear to have merit and make some judgment as to the value of the patent. Then, when you approach the litigation finance companies, you they do a similar betting process are very sophisticated. And and if you will second guessing the lawyers view, it is a patent worth asserting against somebody. And they will also consider you know what the potential recovery would be if an assertion is successful. And so this is all free to the patent owner. In the sense that you're not you know, you haven't made a decision to engage anybody, you're just chopping your asset around. At some point in time. They will try to get you to make a decision, and things will cease being free. But the initial screening and evaluation, patent law firms and patent litigation funders, litigation, funders will help you with that.

Speaker 1  1:09:23  
Great, thank you. Any parting comments before I close this out at or Kevin?

Speaker 3  1:09:30  
We very much appreciate your time and consideration today and look forward to talking to you again in the near future.

Speaker 2  1:09:39  
Absolutely. It's been a real privilege and honor to be here and really thank God for the opportunity and we'd be pleased to answer any questions you have on either the patent strategy or litigation or insurance anything you have are pleased to answer any questions you have.

Speaker 1  1:09:59  
Thanks so much much. On behalf of bottom I want to thank both you and Kevin for this really informative discussion. And we also want to thank everybody who attended today. We hope you found this webinar informative. Just a reminder, a recording of this webinar will be available for viewing within just a few days of today's event. Access to that recorded is included in your recording is included in your registration, you can visit the audit website to view that or to purchase a past webinar you might have missed. If you need any assistance in claiming your CLE credits, please contact me and I'll work that out with you. It is a new thing that we're offering CLE for webinars, so I'll be sure to help you out. When you close out of this window evaluation will pop up. Please be sure to fill that out that helps us serve your needs in the future. And with that, I'm going to go ahead and conclude our program for today. Thanks so much for joining us and have a great afternoon. Thank you all

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