Top 10 IP Considerations in Commercializing Greentech

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1 Top 10 IP Considerations in Commercializing Greentech Michael Schwegman, Founding Partner Schwegman, Lundberg & Woessner, P.A. Gary Speier, Partner Schwegman, Lundberg & Woessner, P.A Matthew Prater, Associate Schwegman, Lundberg & Woessner, P.A. Gregory Smock, Associate Schwegman, Lundberg & Woessner, P.A. Benjamin Armitage, Associate Schwegman, Lundberg & Woessner, P.A. Summer 2009 Greentech Patent Seminar Chaska, MN

2 How do People use IP? Deter others from stealing your patented ideas. Mark your products. Block others from entering a market. Mark your products. Communicate with your competitors. License or cross-license. This is an attractive way to resolve a potential litigation but you need patents to make it work. Good patents get licensed, bad patents get litigated. Attract Investment $$$.

3 IP to Attract Investment VC say that the technology must be fantastic, and the IP must be air-tight. Employee #2 at Amyris was the attorney. Employee #7 was the patent attorney. You don't have to spend a lot of money to get control of your IP. But you have to attack it early, and have a plan in place.

4 What usually happens. Higher legal bills Lower legal bills Frequency

5 Review of Benefits IP is a net-positive revenue generator for many companies. Maintain product exclusivity in key segments. Fend off expensive litigations by cross-licensing IP to others. Build asset value for obtaining desired exit valuation. Marketing tool show expertise in field.

6 IP Considerations: Tip #1 Have you chosen IP counsel with the relevant technological skill-set? Most Greentech breakthroughs involve combining different technical disciplines; Important to choose a firm providing a multidisciplinary approach to IP matters, including attorneys with expertise in chemistry, material science, biotech, electrical engineering and computer software, and mechanical engineering working together. In this way, attorneys can share resources and ideas internally, and streamline client support (e.g., less inventor application review time).

7 IP Considerations: Tip #2 Is your IP strategy harmonious with business objectives and goals? What are the short- and long-term business goals for your company (e.g., be acquired or exist for years to come)? Your IP counsel can and should help you develop, execute, and continuously improve your patent and trade secret strategies to meet your current and future business objectives: Patenting strategy options, and Selecting inventions for patenting.

8 IP Considerations: Tip #2 (continued) Patent strategies used by U.S. companies: Aggressive/Licensing strategy patent everything; Expensive up front, but ensures that you cover everything and eventually provides a revenue stream. Blocking strategy patent technologies your competitors might use; Moderate costs, but provides essential protection and crosslicensing opportunities if you can identify the key technologies. Defensive strategy only patent key technologies; Lower initial costs, but you risk missing key technologies.

9 IP Considerations: Tip #2 (continued) Even when you re not pioneering, invest in IP as insurance Some Greentech startups require massive capital IP is a small expense Plan: Get your inventors to keep notebooks (incremental ideas or blocking patents) Set aside a portion of the R&D budget to capture only the best ideas that trickle out of the notebooks. Periodically send ideas to the IP department. Can pay off in cross-licensing negotiations in the future.

10 IP Considerations: Tip #2 (continued) Selecting inventions for patenting: Business value: What is the value of the technology? Will exclusivity provide a competitive advantage? Does the technology align with your commercial products? Legal strength: What is the novelty over the prior art? Exclusivity: Will competitors have viable design-around options? Can infringement be detected?

11 IP Considerations: Tip #3 Does management understand the financial costs and time-frame to obtain IP (inside and outside the U.S.)? View of provisional applications versus utility patent applications and how such view guides IP management; Don t disclose ideas before they are protected; Offers for sale, and Other public disclosures. One-year grace period in U.S. No grace period in most other countries. Are you about to publish a paper? Demonstrate your product at a conference? Discuss with prospective customers? First discuss with your IP counsel.

12 IP Considerations: Tip #3 (continued) Patentability searches and opinions: Search before you draft claims; Analyze search results carefully; Determine a theory of patentability; and Capture the theory in your patent claims. Can significantly reduce patent application pendency, thus saving your company $$$.

13

14 IP Considerations: Tip #4 Where will company ultimately manufacture (what counties)? China example. Where are (potential) competitors located? Where will company ultimately commercialize (what countries)? What is the market for consumers of your technology and where are they located? Answers to all of the above questions will impact which countries to file IP, and how much resources to devote to obtaining protection in each country.

15 IP Considerations: Tip #4 (continued) Consider filing in the PCT. Designating the EPO as the search authority can result in better searches, better art. Europe has been greener, longer. Designating the US as the search authority can keep the US on a schedule. Bound by treaty to examine within a certain time period.

16 IP Considerations: Tip #5 How might a competitor design-around your technology, in particular your patent claims? Each element test; Discuss strategic purpose(s) for application with your IP counsel, so that patent claims may be drafted accordingly; and During pendency of application, reassess strategic purpose(s) of application, and modify claims if warranted.

17 IP Considerations: Tip #5 (continued) Questions to ask: Who will infringe? Competitors? Can a patent claim be drafted to read upon your competitor s existing or future product? Customers? Will there be a single infringer? Will infringement be detectable? Hidden methods in manufacturing or software, for example.

18 IP Considerations: Tip #6 Strategies for advancing Greentech patent applications through the U.S. Patent Office: Petition to make special. Pros - Fast Patenting. Cons - Many damaging statements on the record that will can cloud your IP in licensing and litigation. Usually not worth it.

19 IP Considerations: Tip #6 (continued) Plan for Obviousness rejections Many Greentech innovations are incremental The patent office is tough on incremental inventions KSR Embarrassing patents and quality review Package your patent application with evidence needed to win Efficiency numbers/energy Saving Numbers

20 IP Considerations: Tip #7 Did you receive government funding (this may give the government certain rights to your IP): Each government interaction has strict requirements which must be well understood. Campbell Plastics Engineering & Mfg., Inc. v. Brownlee, 389 F.3d 1243 (Fed. Cir. 2004).

21 IP Considerations: Tip #8 What are your freedom-to-operate (FTO) /right to use issues (what third-party IP can prevent you from commercializing your own technology, irrespective of your own IP)? Patentability and freedom-to-operate are separate issues; Important to understand infringement risks and competitive threats for new products or developments; and Search for competitor patents and published patent applications: Invalidity searches or positions, non-infringement positions, and/or design-around options for competitor patents and corresponding opinions, if warranted, Patent application watch-lists track status of published applications of potential interest, and Third party protests or other pre-issuance oppositions.

22 IP Considerations: Tip #9 Future evolution of technology while it may not have actually been reduced to practice, have you considered patenting it (if you have a good faith belief it will work)? Obtain early filing date: Constructive reduction-to-practice, versus Actual reduction-to-practice.

23 IP Considerations: Tip #10 How often do you meet with your IP counsel to discuss any changes in your IP strategy in light of changes to your business objectives, goals and products? Communication is key! Periodic meetings between IP counsel and appropriate engineers and product development leaders are beneficial: Do your patent claims read on your commercial embodiment? Will they read upon your competitor s product? Think about future evolution of your technology, and related new technologies that may have implications for your technology.

24 Closing Notes: IP Considerations Recap Develop a plan Cover important ideas always If you re not inventing blockbusters, file on at least some valuable ideas Competitor filings and blocking patents Stick to the plan Identify any problem patents early in the design process, and Design-around, invalidate, or license problem patents.

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