Checklist to Get Prepared for Patent Reform

Are you prepared for the
effect the patent reform
laws will have on R&D, design
and new product
development?
PRESENTED BY:
Newlogic Consulting
Newton, MA
617-433-8449
info@newloicusa.com
www.newlogicusa.com

1 Copyright ©2013 Newlogic

We Help Companies Innovate


Be afraid, very afraid…
• Patent reform will change your R&D and
NPD strategy
• Patent reform will change the time you
have available for innovation
• Patent reform will change how much
budget you have for innovation
• Patent reform will change which
innovations you’re able protect


Disclaimers:
• We’re not lawyers, Newlogic is not a law firm, This
is not a legal opinion
• Patent reform goes into effect March 2013
• It’s a law, and precise interpretation of the patent
reform act will likely require litigation and legal
opinions
• It’s complicated, this presentation is our point of
view and may, or may not, apply to your situation


The Patent Reform Act is the biggest
set of changes to happen to US patent
laws since 1836.
The law’s greatest effects on R&D
relate to:
• First inventor to file
• Prior User Rights


First Inventor to File

• 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


First Inventor to File: So What?
• You will have decide what to file with USPTO as
early as possible
• Potential large influx of worldwide inventors
• Open market testing is risky; however, secret ideas
can lose as well
• Patenting strategy has to be an integral part of NPD


Prior User Rights
– Inventors have the right to ongoing use of undisclosed
inventions (if prior use was greater than a year) , even if
another entity is grated a patent for the invention (due to
first to file)
– Ex.: Manufacturing Equipment:
– If someone else independently develops the same invention they
would not be able to sue for infringement (if you can prove you’ve
been using the invention for more than a year).
– But your use is limited to prior use – Cannot expand without
infringing after the date patent was filed.
– You do not get this defense if invention was filed by univ/tto
– They can sue you for your own technology

Legal Reference: 35 USC 321-329 / Sep 16, 2012

Prior User Rights: So What?

• 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)

Legal Reference: 35 USC 321-329 / Sep 16, 2012

Are You Ready for Patent Reform?
 Is your project selection process ready?
 Is your project management process ready?
 Is your technology strategy processes ready?
 Is your R&D team ready?
 Is your toolbox ready?


How To Prepare for Patent Reform
Addressing patent reform requires top-down solutions

 Make Objective Portfolio Decisions
 Adjust Your Innovation Process
 Innovate Using A Technology Strategy
 Conduct Training and Workshops
 Integrate New Tools


Make Objective Portfolio Decisions
• Integrate IP decisions metrics
• Patent issues will have great impact on innovation
opportunity valuation and strategy
• Much greater reliance on
analytical decision making
to assure all issues are
considered and weighed


Adjust Your Innovation Process
• Patent efforts need to be integrated throughout the
NPD process
• Cannot rely only on stage-gate process – need to
have parallel time-based process
• Cross-functional needs to integrate IP team
members as highly active participants
6. File Provisional

against post-grant
support IP costs
5. Build Case to
competitive IP

Patent – at least

8. File Utility
Competitive

3. Research
intelligence
Technology
Innovation

11. Defend
Positions

Patent

review
Open


Innovate Using A Technology Strategy

• Enable Breakthroughs on Multiple Product Attributes
to Build Defensible IP Estates


Conduct Training and Workshops
• R&D teams need training and skills to understand
how to protect your company’s innovations

Better process to select the most promising
innovation opportunities

Better focus in Clearer & better
Clearer vision product portfolio process to optimize
of long-term strategy product & Better focus in
trends in priorities portfolio plans product planning
and faster product
market/ development
customers, Better focus Clearer & better
in technology & process to plan and
competitors & allocate development
manufacturing
technology strategy priorities capacity

Better process to determine which
resources to build where


Integrate New Tools
• InnoAnalytics.com – A low-cost, innovation
management tool is available to help you:
– Capture your new ideas
– Track competitive intelligence and patents
– Collaborate with patent counsel to help you file as early
as possible
– Leverage the ideas and IP you already own towards new
challenges
– Make objective project management decisions


We Can Help
• 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?
• Ask, how are we going to make the necessary
changes quickly, efficiently and right the first time?


info@newloicusa.com
www.newlogicusa.com
617-433-8449


Checklist to Get Prepared for Patent Reform

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