Understanding And Obtaining Patents And Managing Costs

Joint Meeting of NE ACerS and iMAPS-NEMarch 24, 2010, Marlborough, Massachusetts

Understanding and Obtaining Patents and Understanding and Obtaining Patents and Managing Costs Managing Costs Robert J Sayre EsqRobert J Sayre Esq

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Managing Costs Managing Costs -- Robert J. Sayre, Esq.Robert J. Sayre, Esq.

Registered Patent AttorneyRegistered Patent Attorney WIPO PatentWIPO Patent--Drafting InstructorDrafting Instructor

www.mxlegal.comwww.mxlegal.com

Patents afford an “exclusive” property rightPatents afford an “exclusive” property right


Advantages Provided by PatentsAdvantages Provided by Patents

pricing power financingg

licensing / cross‐licensing Defensive


Patentable Subject MatterPatentable Subject Matter

new compositions new products ornew compositions and structures

new products or components

new processes

software business methods


Patent Filing Phase DiagramPatent Filing Phase Diagramg gg g

(non‐provisional)


Patenting Process Patenting Process –– Managing CostsManaging CostsTypical lifetime cost of US patent: ~$30k

Maximize the value of your investment:

i l• managing counsel– ask for cost estimate– face‐to‐face interaction promotes efficiency

it i d l ti f k– monitoring delegation of your work

• selective outsourcing– non‐sensitive administrative tasks; – beware of export control laws

• efficiencies of electronic/paperless practice, automated software and web resources

• strategic choices – e.g., use of Korean IP Office for PCT search will save at least about $1k.


Changes at the USPTOChanges at the USPTO


Securing a Patent AllowanceSecuring a Patent Allowancegg

Provide examiner with a bridge to allowance

• Leverage favorable PCT Search Report• Examiner interviews – build understanding, trust and personal connection

• Provide compelling portrayal of invention, client and inventors to elicit examiner interest and empathyelicit examiner interest and empathy


New USPTO Director David New USPTO Director David KapposKappos• Puts “Patent” back in USPTO• Brings industry experienceU d i i d• Undoing previous damage• New initiatives for accelerated examinationexamination• Promoting uniform and

compact examination to remove “disfunctional incentives” for rejecting patent applications:

– promoting communication among all interested parties– eliminating “garbage” rejections and objections, andeliminating garbage rejections and objections, and– changing examiner count system & performance appraisal


Global Patent ProtectionGlobal Patent Protection

1978: Patent Cooperation Treaty (now over 1401978: Patent Cooperation Treaty (now over 140 member states) administered by WIPO


PCT Member StatesPCT Member States

(Member states shown in blue)


PCT national stage (or direct foreign filings)PCT national stage (or direct foreign filings)

CustomersCustomers CompetitorsCompetitors

ManufacturingManufacturing


Understanding And Obtaining Patents And Managing Costs

Business

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