11 03 22 415 lucy and the table case

8/12/2019 11 03 22 415 Lucy and the Table Case

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2011 David C. Robertson. Not be used or reproduced without permission.

Lucys Big Invention

Professor David RobertsonThe Wharton SchoolMarch 22, 2011

2011 David C. Robertson. Not be used or reproduced without permission. 2

The inventor: Lucy the cavewoman

DATE OF INVENTION: April 1, 11,000 BC.

Frustrated by always getting dirt on her food


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Preferred embodiment

Considering the prior art found, Lucy begins prototyping.She designsa first functional prototype:

What would your claims be?


Possible claims:

Lucy drafts the following claims:

1. A flat piece of wood attached to four independent legs.

2. A flat piece of wood supported by four sticks.

3. Device for holding food or other items.She reads Patent it Yourself& adds the following claims:

4. Device for supporting a meal or other household items,comprising:

! a panel comprising a flat surface;! four projections attached to the panel and perpendicular thereto;wherein said projections support the flat surface in a horizontal

plane.

5. A device as in any of claims 1-4 above, whereby theheight is no more than 1.5 meters off the ground level.


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Commercial success!

Sales take off

Lucy celebrates, buys a newcar and moves her family toa luxury cave.

Then, the competitionarrives!


You decide to go into the table business

A former employee of Lucy LLC shows you her patent application (which shehad neglected to mark as CONFIDENTIAL and treat as a trade secret):

1. A flat piece of wood attached to four independent legs.

2. A flat piece of wood supported by four sticks.

3. Device for holding food or other items.

She reads Patent it Yourself& adds the following claims:

4. Device for supporting a meal or other household items, comprising:

! a panel comprising a flat surface;! four projections attached to the panel and perpendicular thereto; wherein said

projections support the flat surface in a horizontal plane.

5. A device as in any of claims 1-4 above, whereby the height is no more than 1.5meters off the ground level.

What products can you invent that do not violate Lucyspatent claims?


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New products appear on the market

also available in build-it yourselfform from Cave-kea


But Lucy had read U&E and revised her claims

Lucys final claims:

1. A support apparatus comprising a structure having a surface adapted forsupporting one or more weighted objects a distance above the groundsubstantially in a horizontal plane, said structure adapted for connecting toat least one projecting portion extending from the surface, the projectingportion providing at least three spaced-apart ground-contacting points ofsupport, so as to stably support the weighted objects when placed in anoperational orientation with respect to the ground, characterized in thatsaid projecting portion occupies only a small fraction of the total volume ofspace between said structure and the ground.

2. The support apparatus of claim 1 wherein said structure is, when in anoperational orientation, a substantially horizontal panel and said projectingportion thereof comprises substantially vertically disposed columns fixed toand extending from said structure to the ground.

3. The support apparatus of claim 1 wherein said surface is disposed at aheight above the ground so that said weighted objects supported by saidapparatus are located at approximately the same height as the chest orstomach of users of the apparatus in a sitting or crouched position.

4. A support apparatus kit for facilitating transport and home assembly of thesupport apparatus of claim 1, the kit including the structure, at least oneprojecting portion, fasteners and assembly instructions


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Designing Around

What products can you invent that would

NOT infringe these new claims?


What if Lucy trademarked the TABLE device? Lucys

descendants would continue to receive royalties today!


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And what if Lucy protected her device

with more than a single patent!

Table patent

Nail patent

Hammer patent

TABLE, NAIL, andHAMMER trademarksValue of

IntellectualProperty

Time


The Patenting Process (a timeline and costs)

Conception of invention Sending Invention Disclosure Form to the Patent Department or your

lawyer

Filing of priority(US) patent or US provisional application by patentattorney and inventor(s) (Approx. cost = $500-10,000) CLOCKSTARTS TICKING!

Filing of foreign counterparts or PCT (decision = 6 months; deadline= 12 months)

Publication of application -- 18 months (unless US non-publicationrequest)

Examination by granting authority to ascertain novelty, inventive step,etc. Docs received: Search Report, Written Opinion, PCTInternational Preliminary Examination Report (Often requiresnegotiations with Patent Office). This can be the most expensivestep, as attorneys bill by the hour!


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Continued

Interference (only in the U.S., but need to check publishedapplications now). As expensive as litigation: $1,000,000 ormore!

PCT national/regional phase applications are filed: (30 monthsfrom priority filing date) (Translations are expensive!).

Approximate cost = $120,000 for 5 countries.

Grant (This happens country by country, even if based on PCT orEPO application)

Opposition (9 months from grant - only in EPO) (This can beexpensive and long!)

Annual maintenance fees over 20 years Approximate cost = US$150K for 5 countries.

Enforcement and/or attack (USA = $1-5 Million, Europe =$100,000/country)

2011 David C. Robertson. Not be used or reproduced without permission.

-12 0 1 yr 2 yrs 3 yrs ~4 yrs

~4.5 yrs

Priority or First filing

Prior art date in theUS if first filing was

a US filing (if US inimportant definitely

start with a US firstfiling)

Paris convention deadlineof 12 months from First

filingmust file regulartranslated applications

everywhere (note e.g.Taiwan, Venezuela arenot members of PCT)

Application will bepublished at 18

months (except USif nonpublication

requested)

If PCT filed,deadline for entering

national/regionalstage is 30 or 31

months

If PCT procedureused, approximate

point you can expectapplication to be

accepted or finallyrejected in the USand Europe

If PCT procedureused, approximate

time for nationalizingEuropean patent

application,including filingnecessary

translations

Patent application timeline

If PCT procedure used, approximate point of entry into themaintenance phase, renewal fees have to be paid in each

country on an annual basis even before the patent is granted(except the US which is each 3.5 years after grant)

1.5 yr


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What is your responsibility?

Recognize that youre responsible for one of the majorassets in the company

Maintain and protect your IP assets

Use the full range of IP protections, not just utility patents

When in doubt, call a lawyer or patent law expert

Call sooner, not later

Dont substitute legal advice for management thinking

Apply the same rigor to IP-related investment decisions asto any other decisions

11 03 22 415 lucy and the table case

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