patent reform - impact on new product development
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1 Copyright © 2012 Newlogic
Are you prepared for the effect the patent reform laws will have on packaging R&D strategy, organization and management?
PRESENTED TO: Structural Packaging, St. Augustine, Fl.
March 1, 2012
PRESENTED BY:
Tom Hambleton Food & Beverage Practice Leader, Newlogic
Wil Jacques Patent Portfolio Management Practice Leader, Newlogic
4 Copyright © 2012 Newlogic
“What Me Worry” • A massive shift is going to occur… • Most are unprepared… • Will change R&D and NPD processes… • Be afraid, very afraid…
5 Copyright © 2012 Newlogic
“…the biggest set of changes to happen to US patent laws since 1836.”
• First inventor to file • Supplemental Examination • Post Grant Review • Prior User Rights • More and Different Costs
6 Copyright © 2012 Newlogic
First Inventor to File: The Change • First inventor to file at USPTO wins;
can’t invalidate prior art based on earlier invention date
• First patent stands unless a subsequent patent owner proves you derived the invention from them
• Can’t take something publicly used from a foreign market and patent in the US
Legal Reference: 35 USC 100 & 102 / Mar 16, 2012/13
7 Copyright © 2012 Newlogic
First Inventor to File: So What? • You will have to file earlier and faster • Potential large influx of worldwide inventors • Open market testing is risky; however, secret ideas
can lose as well • Paranoia sets in…everyone is a leak • Patenting strategy has to be an integral part of NPD
8 Copyright © 2012 Newlogic
Supplemental Examination: The Change • Patent Owner can correct inadvertent
omissions (i.e., prior art) in filed patent applica8ons – You can go back and provide a new
reference a@er patent issues; USPTO will reexamine if SNQ of patentability is raised.
9 Copyright © 2012 Newlogic
Supplemental Examination: So What? • New ability to modify your issued patent after it’s
issued – In speeding R&D pipeline to patent, greater potential for
mistakes/omissions not caught until after patent issues.
• Protects you (patent owner) from charges of inequitable conduct (i.e., litigation by a competitor)
• Once effective (Sep 16, 2012), patent owner can submit “any” issued patent (rid potential skeletons in the closet).
10 Copyright © 2012 Newlogic
Post-Grant Review: The Change • Easier, cheaper ways to
challenge patents • Anyone is enabled with ability
to challenge validity of your patent - on virtually any ground
• (e.g. sale or public use etc.)
Legal Reference: 35 USC 321-329 / Sep 16, 2012
11 Copyright © 2012 Newlogic
Post-Grant Review: So What? • Low cost & quicker way to challenge the validity of
competitors IP, but there are risks to petitioner if decision goes against you, – Can be stopped from bringing further action (i.e., PTO,
ITC, District Court) • Patentee can still make changes to patent while
undergoing review • Once review is granted, decision in 1 year
(appealable to CAFC)
Legal Reference: 35 USC 321-329 / Sep 16, 2012
12 Copyright © 2012 Newlogic
Prior User Rights: The Change • Prior user rights a defense to patent
infringement suit – however NOT a defense
against Univ/TTOs
Legal Reference: 35 USC 321-329 / Sep 16, 2012
13 Copyright © 2012 Newlogic
Prior User Rights: So What?
Legal Reference: 35 USC 321-329 / Sep 16, 2012
• Secret activities, reversed engineered product, or EUREKA! can concede market expansion and create estoppels to on-going R&D efforts
• Do you know the technical/patent taxonomy of all products and internal processes and division transfers?
• Sponsored research projects with Universities and other research institutions heighten need for tighter agreements (e.g., CDAs and NDAs)
14 Copyright © 2012 Newlogic
New and Different Costs: The Change • Immediate 15% surcharge on PTO fees • Optional speedy examination cost of ≈ $4800 • More and higher patent filing costs • Additional cost to clean mistakes • New challenge/defensive costs • More and different market/IP search costs • Up to 75% fee reduction to small entities and
micro entities
15 Copyright © 2012 Newlogic
New and Different Costs: So What? • More early stage reviews; • Opportunity Cost - the risk of
not filing a patent; • Fee reductions invite new
players into the market
16 Copyright © 2012 Newlogic
“We patent everything or nothing” “Our costs are out of control”
“Should we spend more on R&D?–or less?”
“Are we patenting the right thing?” “We should develop new products faster.”
“We can file the paperwork later” “We just file what we need now”
“Should we include our supplier’s contribution?”
“Creativity is being killed by bureaucracy “We can’t afford to back every opportunity.” “Another painful new product launch” “We should be able to do more, with less.”
“Most of our patents aren’t used”
What We Hear:
17 Copyright © 2012 Newlogic
“We patent everything or nothing” “Our costs are out of control”
“Should we spend more on R&D?–or less?”
“Are we patenting the right thing?” “We should develop new products faster.”
“We can file the paperwork later” “We just file what we need now”
“Should we include our supplier’s contribution?”
“Creativity is being killed by bureaucracy “We can’t afford to back every opportunity.” “Another painful new product launch” “We should be able to do more, with less.”
“Most of our patents aren’t used” FIRST INVENTOR TO FILE
SUPPLEMENTAL
POST GRANT REVIEW PRIOR USER RIGHTS
MORE & DIFFERENT COSTS
18 Copyright © 2012 Newlogic
“Should we include our supplier’s contribution?”
“We patent everything or nothing” “Our costs are out of control”
“Should we spend more on R&D?–or less?”
“Most of our patents aren’t used” “Are we patenting the right thing?” “We should develop new products faster.”
“We can file the paperwork later” “We just file what we need now” “Creativity is being killed by bureaucracy “We can’t afford to back every opportunity.” “Another painful new product launch” “We should be able to do more, with less.”
FIRST INVENTOR TO FILE
SUPPLEMENTAL
POST GRANT REVIEW PRIOR USER RIGHTS
MORE & DIFFERENT COSTS
19 Copyright © 2012 Newlogic
“Should we include our supplier’s contribution?”
“We patent everything or nothing” “Our costs are out of control”
“Should we spend more on R&D?–or less?”
“Most of our patents aren’t used” “Are we patenting the right thing?” “We should develop new products faster.”
“We can file the paperwork later” “We just file what we need now” “Creativity is being killed by bureaucracy “We can’t afford to back every opportunity.” “Another painful new product launch” “We should be able to do more, with less.”
FIRST INVENTOR TO FILE
SUPPLEMENTAL
POST GRANT REVIEW PRIOR USER RIGHTS
MORE & DIFFERENT COSTS
20 Copyright © 2012 Newlogic
“Should we include our supplier’s contribution?”
“We patent everything or nothing” “Our costs are out of control”
“Should we spend more on R&D?–or less?”
“Most of our patents aren’t used” “Are we patenting the right thing?” “We should develop new products faster.”
“We can file the paperwork later” “We just file what we need now” “Creativity is being killed by bureaucracy “We can’t afford to back every opportunity.” “Another painful new product launch” “We should be able to do more, with less.”
FIRST INVENTOR TO FILE
SUPPLEMENTAL
POST GRANT REVIEW PRIOR USER RIGHTS
MORE & DIFFERENT COSTS
21 Copyright © 2012 Newlogic
“We can file the paperwork later” “We just file what we need now” “Creativity is being killed by bureaucracy “We can’t afford to back every opportunity.”
“Should we include our supplier’s contribution?”
“We patent everything or nothing” “Our costs are out of control”
“Should we spend more on R&D?–or less?”
“Most of our patents aren’t used” “Are we patenting the right thing?” “We should develop new products faster.”
“Another painful new product launch” “We should be able to do more, with less.”
FIRST INVENTOR TO FILE
SUPPLEMENTAL
POST GRANT REVIEW PRIOR USER RIGHTS
MORE & DIFFERENT COSTS
22 Copyright © 2012 Newlogic
By Using Planning, Communications & New Tools You Can Address the Changes Required by Patent Reform Laws
CHANGE SO WHAT WHAT TO DO
First inventor to file Early & Fast
Supplemental
Post Grant Review
Prior User Rights
More and Different Costs
Market Testing
Resources
Speed to Market
Competitive Review
Platform Fit
Partnering Opportunity
We don’t know the value
Technology Strategy
Technology Platforms
Portfolio Management
Innovation Process
Technology Intelligence
23 Copyright © 2012 Newlogic
An Innovation Process that Accounts for Patent Reform Addresses IP at Multiple Stages
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uild
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File a Patent, or not 7
24 Copyright © 2012 Newlogic
Without A Comprehensive Technology Strategy You Won’t Know What IP Is Important
Product/market Where to compete ? How to compete ?
Technology Which technologies ? How to deploy them ?
Manufacturing What to produce where ?
How to manufacture ?
Marketing/distribution Where to sell ?
How to sell/promote ?
25 Copyright © 2012 Newlogic
Technology Platforms Enable Breakthroughs on Multiple Product Platform Features & Elements (Product Attributes)
26 Copyright © 2012 Newlogic
Changes Your Supplier Relationships Affects Open Innovation Initiatives
27 Copyright © 2012 Newlogic
IP Portfolio Decisions Should Be Integrated With Your Project Portfolio Decisions:
UPSTREAM DOWNSTREAM Doing the “right” things Doing things “right” Making choices Implementing choices
OBJECTIVE ACTIVITY
Project and Program Management
CONTINUOUS FEEDBACK
INNOVATION LOOPS
Successful Commercial
Market Entry
Project Selection
Portfolio Optimization
Product Strategy
Product Planning
Technology Strategy
Technology Planning
Ideation and
Validation
Inno
vati
on F
unne
l
28 Copyright © 2012 Newlogic
An Aggressive Project Portfolio With Integrated IP Goals Will Support the Business Strategy & Deliver Greater Benefits
29 Copyright © 2012 Newlogic
New Tools to Communicate & Support Dynamic Decisions to Support Your New Product, Technology & IP Investments
30 Copyright © 2012 Newlogic
Planning, Communication and New Tools Are Needed to Address the Changes Required by Patent Reform
Clearer vision of long-term trends in market/ customers, competitors & technology
Better process to select the most promising innovation opportunities
Better process to determine which resources to build where
Better focus in product portfolio strategy priorities
Better focus in technology & manufacturing strategy priorities
Better focus in product planning and faster product development
Clearer & better process to optimize product & portfolio plans
Clearer & better process to plan and allocate development capacity
31 Copyright © 2012 Newlogic
What to do next? • Start talking about it and asking questions
– Ask how does this effect our NPD process? – Ask how does this affect our decision making? – Ask, how does this impact our technology investments? – Ask, how are we going to manage?
Are Your Prepared?
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