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Patent Prosecution:Best Practices for Reducing Costs While

Improving Patent Quality

February 9, 2010

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Who are we and why do we think we can help you?

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Today's Topics

Big picture – Better use of TTO budget. File fewer applications of better quality.

How to get there? Disclosure evaluation. Communication between TTO and patent attorneys. Look at best practices. Control Prosecution to Control Cost.

Bonus Information. How attorneys see the world. Are you getting the maximum value from your attorney?

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Today's Topics cont.

What should a TTO focus on to save money? Communications between TTO and patent

attorneys. Finding the "best person for the job." Finding and utilizing licensees? Identifying desirable claims? Applying these concepts to develop best

practices.

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Disclosure Evaluation

What is the biggest financial mistake a TTO can make?

What is the invention(s)?This question is the fundamental starting

point and different from the question of "what can/should we claim?"

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Disclosure Evaluation

Who is the licensee? This question is different from "what is the

market?" Big market doesn't mean big royalty.

What are the market forces? This question is different from "how large is the

market?"

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Disclosure Evaluation

Breadth of Claims. In my opinion, this is where most money is

wasted. Tip about how lawyers think.

Inventor has one data point. Likely that more will appear? Easy to envision a genus around one species?

Mouse vs. Human biochemistry.

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Disclosure Evaluation

Breadth of Claims. Need for human data.

The point here is not what the USPTO needs but what licensee needs.

Consider Art Unit. Policing?

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Disclosure Evaluation

Moving Beyond the Disclosure. Draft IP that speaks to all potential audiences.

Investigators, Examiners, CEO, In-house Attorney, Corporate Engineer/Scientist, VC/Angel, Jury.

Build Brands. Institutions. Inventions. Inventors.

Police. Regularly Review a Wide Variety

of Resources.

Does it save money to file a provisional application?

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Communicate with Attorneys

More secret information about how attorneys think: The "Drive-in Window Rule": Once you tell him/her what

you want, that's what you'll get. "If you don't ask for it, you won't get it."

Famous last words?

Talk about it first! What dealing with teenagers can teach us about business

communication

Are you getting the most value from your attorney? You're not, unless you understand the secret weakness of all patent attorneys.

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Communicate with Attorneys

Talk about what you want to claim. Is it worth it to go broad? What should you cover – not what can you.

Short e-mail with assumptions. Simple equals less attorney time. Attorney guidelines are useful, but can't cover all

situations. The number one attribute that attorneys respect about each

other…

Inventorship disputes When can an attorney add value?

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Structuring Prosecution

Consider Art Unit. Evaluate the need for speed.

Accelerated Examination?Not cheap, but could be worth it.

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Control Costs During Prosecution

Control foreign costs. Do you intend to prosecute the application?

The average time to first action is 1.5 years. Have your plans changed?

What about having your attorney notify you before analysis of an Office Action? You'll save money if you don't want to prosecute.

Are the claims now too narrow? Is it a good idea to take allowance of a sub-set of

the claims? Depends on specific facts. The "commercial independence" rule

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Structuring Prosecution

Utilize Interviews. Initial Interviews, Post-examination

Interviews, Interviews with SPE. After-final Practice Consider Appeals. Use licensee as a resource. Use inventor as a resource.

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Ten Practical "Applications"

1. Issue: Incomplete disclosures that focus on the “proof” of the invention.

Solution: Encourage inventors to supplement their initial disclosure to expand the enablement of broad claims.

Even if the inventors only have raw data, they should write it up as if it were a manuscript.

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Ten Practical "Applications"

2. Issue: Inventors sometimes provide written material in forms that can’t be electronically manipulated.Solution: All material should be in electronic form so that it can be quickly cut, pasted, and edited for use in the application.

Inventors should provide electronic copies of chemical structures whenever possible.

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Ten Practical "Applications"

3. Issue: Multiple inventors, and especially multiple inventors from different institutions, can create a situation where inventors are "talking" over one another.Solution: Designate a lead inventor/institution and stick to that designation.

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Ten Practical "Applications"

4. Issue: Initial inventor meetings to discuss a disclosure can vary in usefulness.

Situation: When the inventor has provided useful disclosure materials (new developments, prior art papers, data, etc.) beforehand, the meeting can be more productive.

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Ten Practical "Applications"

5. Issue: Inventors often continue to revise the manuscripts during the patent application drafting process, which can substantively affect the content of the application.

Solution: Explain the patent drafting process to the inventor at the outset. If there are substantive changes that must be made to the manuscript, the inventor needs to point the changes out and not merely hand over a new manuscript.

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Ten Practical "Applications"

6. Issue: When information in tables, figures, or sequences is incorrect, it can be difficult, if not impossible, to correct and can endanger the claims if the error is in the patentable subject matter

Solution: Inventors should make a separate check of this important data.

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Ten Practical "Applications"

7. Issue: When writing an application with the goal of licensing the technology, effort should be made to have a final application that "speaks" to all potential audiences, which may require details beyond those necessary for enablement.

Situation: Prepare "educational" language for some technologies and re-use the language.

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Ten Practical "Applications"

8. Issue: Applications can have unnecessary extensions of time.Solution: Better, standardized system of planning and reminders and better understanding of priorities.

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Ten Practical "Applications"

9. Issue: Office Action is received that cites hundreds of pages of prior art.

Solution: Have attorney provide an initial review of an Office Action, ask the inventor or a licensee to pour through the hundreds of pages of prior art and see if there are additional distinctions that may be available.

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Ten Practical "Applications"

10. Issue: Prosecution is becoming protracted and licensing revenue is stalling as a result,

Solution: Utilize alternatives to continuing prosecution before the primary examiner: pre-appeal conference request, appeal, interview with SPE.

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Thank you!Any Questions?

Contact

(414) 277-5709

jean.baker@quarles.com

Contact

(414) 277-5405

jack.cook@quarles.com