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Frisina, LLC
Creating Wealth Through Intellectual Property TM
www.frisinaIP.com
Introduction
Representative Sectors
Chemicals
Polymers
Pharmaceuticals
Biotechnology
Biomedical
Medical Imaging
Advanced Materials
Nanotechnology
Semiconductors
Medical Instruments
Medical Tests
Liquid Crystals
Power Generation
Fuel Cells
Software
Internet Law
Business Methods
Introduction
Patent Basics
From Conception to Capitalize
Offensive Strategy: Excluding Competitors
Defensive Strategy: Maintaining Your Freedom to Operate
Monetizing IP
Do I Need a Patent
Patent Basics
Patentable subject matter
Any useful process, machine, manufacture, or composition of matter
35 U.S.C. 101
Patent Basics
Territorial
Only enforceable within the issuing nation
A foreign inventor can obtain a US patent and vice versa
Time-limited
Generally 20 years from the earliest effective filing date
Time limits
one year grace period in the US
Immediate forfeiture in most foreign countries
Absolute novelty requirement
Technology Space
Robotics
Copyright 2007-2011 Frisina, LLC
Technology Space
Concept Stage
Conception; The Idea Stage
Focus of Activities:
Sources of capital
Personal finances, credit cards, family and friends.
Concept Stage
The Business Model
Product: robotic devices for blister packing pills
Manufacturing: local (USA)
Markets: Worldwide, esp. USA, Europe, Japan, China
Distribution: inside sales directly to end users
Concept Stage
Assessing the Patent Landscape
Where is IP activity occurring in our patent space?
Who are the players?
How well resourced are my competitors?
What is my litigation risk in this patent space?
How well developed are my competitors patent portfolios?
How will the IP landscape change over the next 5-10 years?
Concept Stage
Assessing the Patent Landscape
Concept Stage
Assessing the Patent Landscape
Concept Stage
Assessing the Patent Landscape
Concept Stage
Assessing the Patent Landscape
State-of-the-art search (a/k/a
collection search)
All patents in a given technology
space
Includes summary statistics and
visualizations
Concept Stage
Recap
Determined the business model, and long-term objectives
Assessed the patent landscape
Gathered resources: financial, technical, etc.
Maintained secrecy
Our Choice:
Technology A: blister pack grabber
Commercialization
Focus of Activities:
Potential new funding issue
Acting on the business model with our long-term objectives in
mind
Making products
Setting up distribution
Selling products
Commercialization
Sources of funding
SBA Loans for moderate requirements
State/local/private grants and/or loans
VC and Angel investors
Commercialization
Outsourcing versus manufacturing in-house
Outsourcing is an attractive option for new market entrants
In-house Manufacturing:
Is a rare skill or specialized facility required?
Is the risk of disclosing your know-how is too great?
Is manufacturing very low volume?
Enterprise Stage
Concerns and Opportunities
Sales growth
IP Strategy
Never stop innovating
Offensive Strategy
Offensive Strategy
Exercising the right to exclude others
Beyond reserving your niche
Offensive Strategy
Raise competitors cost of doing business
Legal costs, R&D costs, operations costs
Offensive Strategy
IP abatement insurance policy
Pays for the cost of enforcement
Enforcement
Enforcement begins with a C&D letter
Litigation may be necessary
Force a settlement
Litigate
Defensive Strategy
Defensive Strategy
The best defense is a good
offense
Yogi Berra
Defensive Strategy
Risk Management; Preventative measures
Patent availability searching
Identifying potentially
problematic art
Draft around,
Flag for design around, or
Abandon early
IP purchases or licensing-in
Contract
Non-Compete agreements
Joint Development Agreements
Defensive publication
Defensive Strategy
Defending against patent infringement
Self-financed defense
IP Insurance
defense policy
defense and indemnity policy
Defensive Strategy
RPX Corporation www.rpxcorp.com
Monetizing IP
Monetizing IP
Sale or Licensing-out
Non-core technology,
Non-productive technology
Non-threatening technology
IP auction houses
www.redchalkgroup.com
www.adaptipventures.com
www.patenttransferltd.com
Copyright 2007-2011 Frisina, LLC
Monetizing IP
Securitization of IP
Bond issue
Backed by licensing or royalty revenues
Existing income stream required
ipCapital Group (www.ipcg.com)
Monetizing IP
Commercial lending
IP as collateral; must have explicit value
10-40% LTV
Many banks do not make pure IP loans
Do I Need a Patent?
Do I Need a Patent?
Is a trade secret more appropriate?
Consider patentability (new, useful and nonobvious)
Consider the product life cycle
Is your true interest exclusivity or stamping patent pending on your product
Do I Need a Patent?
Cost/Benefit:
Do I Need a Patent?
If the difference between your share of the market with exclusivity versus without is greater than the
cost of patenting then a patent is worth while. (e.g. initially about 5K plus up to an additional 15 to
20K over several years).
Do I Need a Patent?
Recap:
1.How much money do I stand to make?
a)
b)
c)
d)
Additionally:
3. Do I intend to seek capital investors?
IP is generally required
When to Patent
Conception
Proof-of-Concept
Enterprise
Factors:
Stage of development
Activity of your Competition
Cost versus resources on hand
Thank You
For Further Information
www.frisinaip.com
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Contact Me
(330)338-0589 Direct
dominic@frisinaip.com