Is “Freedom to Operate” Mission Impossible?
February 21, 2013
Irvine, CA
The recipient may only view this work. No other right or license is granted.
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“FREEDOM TO OPERATE”
Can you make, use and sell your invention without being sued for patent infringement?
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INFRINGEMENT VS. PATENABILITY
PATENT RIGHT TO EXCLUDE (§ 271)
PATENT RIGHT TO PRACTICE
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INFRINGEMENT VS. PATENABILITY
Can Exclude #2 & #3 Can Exclude #3 Can Exclude Others
Can Practice Cannot Practice Cannot Practice
Can Practice Cannot Practice
#1 #2 #3
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Is “Freedom to Operate” Mission Impossible?
IP5 Statistics Report, 2011 at 48
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VITO CANUSO, Esq.
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MARK J. KERTZ , Esq.
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PRACTICE
Software / EE
Counseling & Litigation
BACKGROUND
Clerked for CD-CA
Software Engineer
AMY C. CHUN, Esq.
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WHEN DOES THIS COME UP?
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How do you
convince
investors you
have “freedom
to operate”?
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HIGH LEVEL STRATEGY
Do advance work?
Impact of litigation on a company
Investor expectation
Risk mitigation strategies
Expired IP / "off the shelf" technology
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NUTS AND BOLTS
Which features do you study?
Analysis limited to US Patents?
Pending Applications
Patents with broad disclosure, narrow claims?
What about on-going litigation?
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ADDRESSING A PROBLEM REFERENCE
• Non-infringement
• Design Around
• Invalidity
• Licensing/Acquisition
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POST-ANALYSIS
• Monitoring
• Tracking Design Changes
• Review Technical Materials
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LAUNCH PAD EVALUATION
A. No searching or evaluation of 3rd party IP done; OR company has been sued or threatened or knows of significant infringement risk
B. Some informal searching done, but no legal analysis performed
C. Some formal searching done, legal analysis performed - results mixed to positive
D. Extensive searching done - no significant 3rd party IP found creating risk
MO
RE
RIS
K
LESS
RIS
K
Come meet the panel and bring your questions!