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Steering the boat in stormy waters

Zeev Fisher, AdvocateAppelfeld Zer Fisher, Advocates and Patent Attorneys

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We will discuss…

• The big picture today.

• The role of IP today.

• Recommendations.

• AZF’s role.

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The Big Picture

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Financial Crisis

• Limited resources.

• Tight budgets.

• Careful thinking.

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Rough USPTO – Bad for applicants

• Anti-patent political atmosphere (mainly due to patented drugs).

• Anti-patent judicial approach (KSR, Bilski).

• USPTO backlog.

• Examiners care about counts, not quality.

• 80% of the first office actions – no allowed subject matter.

• More office actions -> more prosecution estoppel.

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Average time between filing and first Office Action (Months)

Technological Field

23.9Semiconductors

30.5Static Structures

35.4Organic Chemistry

25.9Molecular Biology

24.9Computer Architecture

23.4Medical Devices

42.9Pharmaceutical formulations

34.8Digital Communication

38.8Computer Networks

42.3Business Methods

What happens in the US? How bad is the backlog?

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Patent Prosecution Highway – Good for applicants

• Filing an application in a treaty country - Office of First Filing (OFF).

• Filing a corresponding application in a treaty country - Office of Second Filing (OSF).

• Patent issued in OFF.

• Filing a petition according to PPH treaty in OSF.

:A growing number of bilateral treaties providing a similar mechanism The time between filing and first Office Action is shortened if a

.corresponding patent has been issued in a treaty country

!Currently – substantive examination is not waived

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Patent Prosecution Highwaysaround the world

• UK-USA

• EPO-USA

• CANADA-USA (two more years)

• KOREA-USA (permanent)

• JAPAN-USA (permanent)

• JAPAN-UK

• GERMANY-USA

• AUSTRALIA – USA

• USA - Denmark

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Growing IP Market

• During most recent years – IP becomes an asset which can easily be sold or licensed.

• Many IP transfer companies emerged.

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The Role of IP Today

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Traditional role of IP

• “Nice to have” for startups. Part of a strategy to established companies.

• “Investors like it” – a primary consideration to file patent applications.

• A patent application – as good as a granted patent.

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Today - after grant• Patents today go through better examination. They are

therefore stronger, and deter infringers more.

• Patent trolls make infringement suits more likely, and more of a threat to large companies.

• At all times, patents can be licensed.

• At all times and particularly bad times, patents can be sold. Today, a high tech company will practically always get more for its patent portfolio than what it has invested in its creation.

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Granted Patents vs. Pending Applications

• Since granted patents are worth more today, it means:

• Applications quality becomes crucial. Investors and strategic partners will look more into the IP’s actual value then for its mere existence.

• Good IP portfolio means an “insurance” for an investor/SP. Therefore, he will be more happy to invest in such a company.

• Granted patents become a great asset. Getting patents fast becomes important.

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Recommendations

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Create more value, for less money, and do it smart

• Ongoing strategy:• Define important technologies.

• Plan budget.

• Think of alternatives to use IP.

• Have a CIPO. Good CIPOs can be found on freelance today.

• Spend less:• Work with Israeli Attorneys.

• Draft less claims.

• Draft reasonably broad claims.

• Write clear applications.

• File only when you really need to.

• Don’t use PCT for every case.

• Be smart on prosecution:• Use PPHs. / 17(c) in israel.

• Use Interviews where appropriate.

• Draft claims in different scopes.

• Clear, clear, clear.

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USE YOUR GRANTED PATENTS !

• Always make sure you know what you have.

• Make sure you know what’s coming. Don’t lose a patent over an annuity.

• Find out what your competitors are doing.

• Sell patents you don’t need. Your fear of suits can be easily solved by a back license.

• License all the time. If you don’t want to handle finding licensees yourself – get a broker.

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Worldwide Licensing Revenues, 1980 to 2010

Development of Worldwide Licensing Revenues

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300

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500

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1980 1990 2000 2003 2005 2006 2007 2010

in B

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n U

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European patent office Ocean Tomo The Economist The New York TimesAthreye & Cantwell Rivette & Kline Klawitter & Hombrecher

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AZF’s role

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Why are we special?

• Because we draft patents in view of the most recent case law, and draft them in a way to avoid long prosecution as much as possible.

• Because we understand prosecution estoppel and avoid it.

• Because we are #1 experts in the country in PPHs and other acceleration procedures.

• Because we handle everything from drafting to sales and licensing.

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Thank you for listening.

For more info (Hebrew): www.patentim.com972-3-7553866