frank ip slides for highland
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- 1. IP Presentation Highland Capital Partners Roundtable Steven J. Frank, Partner Goodwin Procter August 2, 2007 2007 Goodwin ProcterLLP
2. About Goodwin Procter
- Over 750 attorneys in Boston, Los Angeles, New York, Palo Alto, San Diego, San Francisco, Washington, D.C.
- Nationally recognized expertise representing technology and life sciences companies, financial services companies, as well as private equity and venture capital firms
- Nationally recognized expertise in intellectual property, products liability, FDA, commercial litigation, real estate and business law
3. Rankings & Recognition
- NATIONAL RECOGNITIONin Chambers 2007 in the areas of Intellectual Property, Litigation, Financial Services, Life Sciences; Private Equity: Buyouts & Venture Capital Investment; and REITs
- ONE OF THE TOPIP defense firms(IP Law & Business)
- ONE OF THE TOP 10firms for superior Client Service ( BTI Power Rankings )
- RANKED 2 NDIN THE NATIONin technology support among the AmLaw 200(American Lawyer Tech Scorecard)
- Ranked in theGUIDE TO THE WORLDS LEADING EXPERTSin Trademark Law and The Top 50 Trademark Attorneys
4. Representative IP Clients 5. The Basics
- What is IP
- and
- Why do I care?
6. Protection mechanisms for technology
- Patents
- Protect
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- Machines
-
- Processes
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- Chemical compositions
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- almost anything you can think of
- Independent development is no defense to infringement
7. Protection mechanisms for technology (contd)
- Copyright
- Protects
-
- Lots of stuff, but in terms of technology, primary relevance is software
- Limitations
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- Narrowly applied
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- Doesnt exclude independent development
8. Protection mechanisms for technology (contd)
- Trade Secrets
- Courts help those who help themselves
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- Need to take steps to maintain secrecy
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- Courts are concerned with unfair competition, not technology protection
- Independent development, reverse engineering defeat trade secrets
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- Once the cat is out of the bag ...
9. The Basics of Patents
- Must be something inventive (relatively high bar) and useful (relatively low bar)
- Must not have been publicly disclosed more than one year ago (for US patents)
- Who is the inventor?
- A patent does not guarantee that you can actually practice the invention
- Will take a long time (~4 years) and cost a lot of money (~$15,000)
10. Why Does Anyone Care?
- Wall out Competitors
- Defense
- Potential Income
- Value on Exit
- Credibility to Investors
- Articulated Description of Market Differentiation
11. Avoiding Common Pitfalls
- Work on your own time and equipment
- Understand your current obligations
- Document contributions from others
- Document code provenance
- Get assignments
- File something before you launch (provisionals)
- Do some searching
- Focus on the product, not patents
12. Provisional Full PatentApplication and (maybe) International (PCT) Application Non-Public Disclosure Tinkering Public Disclosure Patent Pending 1 Year Foreign Patent Filings 18 Months
- Provisionals generally cost between $1,000 and $5,000
- Full applications generally cost between $8,000 and $15,000
- Strive for high reuse between provisional and full application
- PCT applications cost approximately $4-5,000 almost all official fees
- Foreign applications cost between $3,000 (AU, CA) and $15,000 (EP and Japan)
- One well-drafted application can often lead to numerous issued patents
13. Possible Changes
- Accelerated Examination
- Peer Review
- Post-Grant Opposition
- Changes to Continuation Practice
- First-to-file
14. IP Presentation Highland Capital Partners Roundtable Steven J. Frank, Partner Goodwin Procter August 2, 2007 2007 Goodwin ProcterLLP