During the afternoon session, we will be breaking out into three groups: Prosecution, Litigation and Strategic & Transactional.  I’ve decided to sit in on the Strategic & Transactional discussion.  Marian Underwiser of  IBM Corporation will be discussing global strategies for managing and policing patent portfolios.

Invention Management –

1. Not just managing a collection of patents, need to consider all facets of Intellectual Property Lifecycle. 
2. It’s informed by corporate objectives –  What does the company need from its patent portfolio?  Why & how are inventions generated? What industries are most relevant? What is the market strategy? Who are the competitors?
3. A team sport – requires active participation from all parts of the company
4. A moving target – requires constant refinement and evolution

Leveraging IP for Business Value – IP rights are extremely powerful.  How do I make money on my IP in an area like open source?  Need to think strategically about your patents.  What services can I add on top of my platform. Building a service line on top of open source.  as you look at development of inventions, the flexibility of patent right allows you to use the patent right where you don’t think it’s even possible – can give you leverage as to where the development goes.  You need to be very connected to your business to figure out how to do that.

  Stages of Invention Management

1. Start with invention submission management  – Inventors, Master inventors, Local IP law, PPM, Invention Review Boards 
2. Procuring & Managing patent issuance – Inventors, PPM,  Local IP Law
3. Leveraging the patent portfolio – local IP law, PPM, Inventor, Technical/Licensing

Focusing Inventor Activities

1. Processes – Invention submission & tracking invention filing progress.  Need to educate the inventors.
2. Resources – WPTS Invention Submission (PVT, Portfolio needs list, use in products/services (ebay)) and filing pipeline (tracking the portfolio).  Want the inventors to tell you business information that they have.
3. Incentives – IAAP filing awards (special incentives, disclosure awards).  IBM has used this sparingly, need to be careful with this.  Can get people to submit inventions & file, but can be a bad thing as it may result in a lot of “junk”.  May end up filing things you shouldn’t be filing. 

Procuring & Managing Patent Issuance

1. Processes – invention focusing to reflect business need (servise claiming – focus invention through service component); portfolio indexing – PPM codes; patent ratings, geographic portfolio sizing, geographic portfolio composition, tracking patent application progress.  How can I leverage my patent?
2. Resources – WPTS (patent prosecution, patent family management), Patent Issuance Pipeline
3. Incentives – patent issue award.  Issuance awards can be very usefule, can keep people motivated.

Leveraging the Patent Portfolio

1. Processes – patent licensing (identifying Candidate licensees & patents, developing proofs & value presentations, licensing & litigation), patent assignment, pledges, open source & open standards (there is a relationship between proprietary innovation and open innovation). 
2. Resources – WPTS (patent leveraging)
3. Incentives – Division awards & corporate awards

Impact of Recent Developments – USPTO

KSR v. Teleflex

-2007 Examination Guidelines  – seven rationales to support obviousness rejections, one of which is TSM.

-2010 – Examination Guidelines Update: Developments in the Obviousness Inquiry after KSR

1. Analysis must be made explicit
2. Applies to all arts equally (In re Kubin)
3. Includes examples kof both obvious and nonobvious claims from Federal Circuit cases (combining prior art elements, substituting one known element for another, “obvious to try”, consideration of evidence. Reference to “problem to be solved” and predictability – what description make sthe best case for patentability in the specification?

Controlling timing of prosecution – provides flexibility in portfolio building and patent application management

1. 3-Track proposal: prioritized examination, deferred examination, counterpart application examination, supplemental serching.
2. Changes to Implement the Prioritized Examination Track (Track 1) of the Ehanced Examination Timing Control Procedures

Other acceleration programs

1. Accelerated examination
2. Green technology pilot program
3. Project Exchange
4. Check statistics

-Proposed changes to rules for Ex Parte Appleals improve efficiency – may decrease cost and make appeals more attractive

-Compact prosecution efforts such as eadrly interviews and changes to count system may also decrease cost by decreasing actions per disposal

-Prosecution guidelines are very important and should reflect these developments

-International portfolios & worksharing – many pilot programs

Tags: IBM Corporation, Patent portfolios, policing patent portfolois

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