1. Crucial Intellectual PropertyStrategiesin the Medical Devices SectorMIT Forum, January 2011Zeev Fisher, Advocate & SolicitorManaging Partner, FWJ(c) Fisher Weiler Jones 1

2. What Will We Talk About Today1. What is IP Strategy?2. Solid rights3. Quality protection4. High chances of protection5. More for less (c) Fisher Weiler Jones 2 3. What is IP Strategy? IP Strategy is about defining thegoals that you wish to achieve bybuilding an IP portfolio, taking intoaccount the companys business andthen finding the most cost-effectiveway to achieve these goals(c) Fisher Weiler Jones 3 4. Goals of IP in General(c) Fisher Weiler Jones 4 5. Defensive(protecting own products) Marketing Offensive (attacking/Branding (image of others)innovation)GoalsCross-Licensing Licensing(c) Fisher Weiler Jones 5 6. Defensive(protecting own products)Cross-LicensingGoals MarketingOffensive /Branding(attacking (image ofothers)innovation) Licensing(c) Fisher Weiler Jones6 7. Goals Defensive (protecting ownproducts)(c) Fisher Weiler Jones 7 8. How do we achieve these goals?1. We want solid rights2. We want quality protection3. We want high chances of protection4. More for less(c) Fisher Weiler Jones 8 9. 1. Solid rights(c) Fisher Weiler Jones 9 10. SolidRightsSolid Rights Solid rights are rights that belong only to theperson/company that sells them: Have all been assignments been signed and recorded properly? Were inventors left out? Were non-inventors added? Have you said or written anything not inconjunction with the patent applications?(c) Fisher Weiler Jones 10 11. 2. Quality Protection(c) Fisher Weiler Jones 11 12. QualityProtectionThe Cannons of Quality Protection Protecting all aspects of an invention. Claims of different scopes. Claims: Having only one meaning; The meaning is clear; Independent claims includes only the minimum necessary; Local versions; Support Little estoppel.(c) Fisher Weiler Jones12 13. QualityWhat not to do in claim draftingProtection a first plane substantially perpendicular to said input axis of rotation; transmission means, each of which is coupled to; a. obtaining a toothbrush having b. moving said toothbrush characteristics that resemble... alleviating needle phobia and/or tension and/or anxiety(c) Fisher Weiler Jones13 14. QualityProtectionHow to minimize estoppel? Compact prosecution. Interviews.(c) Fisher Weiler Jones14 15. 3. High chances ofprotection (c) Fisher Weiler Jones 15 16. Chances OfTypical Startup Budget-Restricted Tactic Protection PROVISIONALPCT NATIONAL PHASE (c) Fisher Weiler Jones16 17. Chances OfWhen is it a good strategy?Protection When inventions are very immature. When budget is near zero. Where there are doubts about the strength of thetechnology.BUT (c) Fisher Weiler Jones17 18. Chances OfBUT Protection ~7 years until patent protection. ~20 months until first indication of patentability. Expensive process PCT fee, ineffective examination, USclaims, IDSs, no PPHs The Result high risk for investors / buyers (c) Fisher Weiler Jones18 19. Chances OfAlternate strategies Protection Full US UKEuropeNATIONALNATIONAL NATIONAL PHASE PHASE PHASE(c) Fisher Weiler Jones 19 20. ChancesOfAdvantagesProtection Inexpensive filing (230 GBP for filing). 4 months for first search. ~2 years for first patent. ~3 years for US patent. Excellent medical devices examiners with whom you can speakabout your patent. Opportunity to perfect applications before year ends. Saving ~30% of the overall patent process cost. UK NATIONAL PHASE (c) Fisher Weiler Jones 20 21. 4. More for less (c) Fisher Weiler Jones 21 22. Chances OfSaving Cost by Changing Patent StrategyProtection Search! Seek protection reasonable in scope. Focus on your novelty. Dont file anywhere. Consider skipping PCT. (c) Fisher Weiler Jones22 23. Saving Cost by Changing The Deal with Your Chances Of ProtectionPatent Attorney Sharing the risk Prosecution packages Refuse to %-cap deals Refuse paper-pushing charges Docketing deals Get outsource in-house counsel Outsource annuities (c) Fisher Weiler Jones23 24. Chances Of Protection FilingAnnuities/Reporting Renewals Drafting Patents Grant / Petitions/IDSs/Validation Status Reports (c) Fisher Weiler Jones 25. Conclusions(c) Fisher Weiler Jones 25 26. Conclusions You MUST ask yourself what you want to achieve, before you startfiling. To obtain solid rights you must make sure all assignments arerecorded and the inventors are really the inventors. You can and should read your patents to ensure they comply with thecannons of quality protection. Take outside advise. Filing a Provisional patent application is one strategy. Not the onlyone. Filing full US, UK, European patent applications, skipping PCT,filing petitions and interviewing cases are all part of IP strategy toconsider. Your patent attorneys are your partners. Ask them to chargeaccordingly. (c) Fisher Weiler Jones 26 27. Questions? (c) Fisher Weiler Jones 27