napp presentation
TRANSCRIPT
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 1/22
Jackie Hutter, MS, JDDecatur, GA
404-797-8124
www.HutterGroup.com www.PatentMatchMaker.com
www.ipAssetMaximizerBlog.comTwitter @ipStrategist
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 2/22
� This presentationreflects my personalexperiences and
opinions about thestate of theprofession.
� You may disagree,--perhaps vehemently,--with my views, buttrust that many othersdo not.
Photo: Flickr/YellowCakeMushroom
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 3/22
� ´I got paid ridiculous
amounts of money to
write worthless
patents. They werebulletproof, but
worthless
nonetheless.µ
Photo: Flickr/TractorToe
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 4/22
� 1) Do not anything themarketplace cares about;
OR
� 2) If does cover something with a measureable market,typically too narrow toeffectively preventcompetition;
OR
� 3) Patentee is incapable orunwilling to create valuefrom invention.
Photo: Flickr/YellowCakeMushroom
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 5/22
� Patent is government
recognition that
invention meets
statutory requirements� USPTO doesn·t care if
invention has
commercial value
Photo: Flickr/mykpwedding
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 6/22
� Many people conflate value of patents to abusiness idea� Do we ´fetishizeµ
patents?� Free market and
business acumen onlythings that determines value
�´I
deas a dime a dozenµ� Patent saleable only if covers a viablebusiness model� BlackBerry® litigation
Photo: Overstock.com
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 7/22
� As a patent practitionerrole is to obtain patents,not give business advice
� Assume client has
established need for one
BUT
� Consider understandingreasons why client is
seeking to obtain patent� Can you afford to steer work away?
� Are there other ways togenerate revenue?
Photo: Flickr/fpSurgeon
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 8/22
� Most inventions are theresult of a desire tosolve a broadly
conceptualizedconsumer need
BUT
� Most patents cover onlya subset(s) of the waysaddress the need
Photo: Flickr/Senór Cohiba
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 9/22
Put simply, too many
patents cover theINVENTION not the
INNO V ATION
Photo: Flickr/the Punk
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 10/22
� Automated paper
towel dispensers
� First broadly
distributed product
� Innovation: Hygienicpaper towel
dispenser
� Invention: Specific
way to addressconsumer need
� Patented invention ´6
ways to Sundayµ
Photo: Georgia-Pacific LLC
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 11/22
� Innovator createdmarket demand� User vs. buyer
� Competition reactedby designing around� Now at least 6 different
options
� Price erosion
� Worse overall forinnovator� Cost of market entry
higher for them
Photo: Georgia-Pacific LLC
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 12/22
� Instead of startingapplication draftingfrom invention, workback to original
problem itself andbroaden from that point� Make sure metes and
bounds of inventionencompass commercial
viability� May not be possible to
obtain full scope, butcan·t get broad scope if
don·t try Photo: Flickr/smkybear
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 13/22
� Existence of patentirrelevant to consumeracceptance of newproduct or technology
� Consumer buys productnot patent
� Commercial successtypically due to� Experience
� Acumen� Relationships� Timing� Luck
Photo: Apple Corporation
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 14/22
� Counsel client thatunlikely that will makemoney from obtaining apatent on an idea she
thinks is valuable� People buy viable businessmodels, not bare ideas
� To enhance success of selling patent rights,target possible acquirers
and frame patent draftingin their terms� ´Don·t be a selfish
patentee.µ
Photo: Flickr/cliff1066
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 15/22
� Consider recommending thatclients test the market beforefiling application
� Most applications filed too early� Few inventors need to preserve ex-N. America filing rights
� Rely on CDA·s and/orexperimental use exception
� Don·t rely on ´skinnyµprovisional filing
� Only as good as what is disclosed
� May seem risky, but businesspeople used to dealing with risk� ´I gave conservative advice about
filing dates because it served myinterests.µ
� Education and communication iskey
Photo: Flickr/esoule
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 16/22
� When appropriate
develop an
´ecosystemµ approach
to patent filing strategy� Identify aspects of
product needed for
market success
� Goal to ´make it cheaper
to go through you thanaround you.µ
� Ex: Product and
packaging
UtilityPatent on
CoreProduct
DesignPatent onProduct
UtilityPatent onPackage
DesignPatent onPackage
UtilityPatent onSpecific
Feature of Product
Photo: Flickr/YellowCakeMushroom
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 17/22
� Sometimes broad
patent rights not
available
� For´realµ businessideas, consider
counseling to
develop brand equity
� Trademark/trade
dress
Photo: Flickr/mleak
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 18/22
�
Consider counseling client thatthere are other ways to create value than by obtaining a patent
� First Mover Advantagex Sometimes first to market ends up
effectively owning the relevant market,especially when
x Limited distribution opportunities;x Short shelf life; or
x Only enough customers for 1 supplier
� Ride on coat-tails of another patentholderx Strategic alliances, joint venturesx Ex: If supplier has patent to raw material and
you obtain exclusive rights to use in yourproduct, can be almost the same as obtainingown patent
� Commercial relationshipsx Contractual-based market exclusivity
� Many others!x Will be market and product specific
Photo: Flickr/Paul_S_UK
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 19/22
� Patent practice is
changing
� More competition
� Opening of ́ blackboxµ
� Technology advances
� End of ́ glory daysµ of
client deep pockets
Photo: Flickr/AmyMichelle
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 20/22
� The $64K Question
How do I create
and/or maintain apatent practice that
maximizes value
creation
opportunities for me A ND my client?
Photo: Flickr/marco_bellucci
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 21/22
� When you find out
how to create a
mutual value creation
proposition, pleaselet me know!
� Disruptive innovation
is occurring
� IP world will be totally
different in 5 years
� It will be a bumpy ride
Photo: Flickr/ShellSnaps
8/7/2019 NAPP Presentation
http://slidepdf.com/reader/full/napp-presentation 22/22