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Intellectual Property

Intellectual Property. Jim Hurst IP Director AIG June 2011. Introduction. Disclaimer

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Intellectual Property

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  1. Intellectual Property Jim Hurst IP Director AIG June 2011

  2. Introduction • Disclaimer • IP law and its interpretation is a very complex and constantly changing subject. The laws vary from country to country, and the interpretation of them changes over time as courts react to changing political and social conditions. • As Scientists and Engineers we like to deal with hard facts, variables we can measure and control. IP law isn’t like that. It is full of uncertainty and an answer that is correct today, may be wrong tomorrow. • We can only give you general guidance in any of these IP training sessions and questions on specific issues need to be brought to the attention of the IP group or if appropriate and approved by your IP coordinator, to your local outside counsel. • We do not expect you all to become IP experts. We do expect that you will become familiar with general IP practices and concerns and that you will recognize when you need to ask for advice. • You don’t need to understand all the details • The IP group does that • You need to understand IP, why we need it, how we get it, and how we avoid other people’s IP. • You undoubtedly create IP • You can destroy it • The IP group has a series of training modules that we will be presenting to you over the coming months

  3. Who are the IP group? • For AIG • Peter Lee – Thermo Fisher VP Intellectual Property - Waltham • Jim Hurst – IP Director – San Jose • Phil Marriott – Eu IP manager - Manchester • Peter Parlett – Eu Patent attorney - Manchester • Chuck Katz – US Patent attorney – San Jose • Mike Staggs – US Patent attorney – San Jose • Gordon Stewart – US Patent attorney – San Jose • Tom Cooney – US Patent agent – San Jose • Pam Kee – US Patent agent – San Jose • Diane Kizer – Patent Specialist – San Jose • Carina Frazer – Patent Specialist – San Jose • Why?

  4. Patents, why bother? • To stop our competition being competitive • Prevent them from copying our ideas • Prevent them from developing their products in the way that they want to • To have something to negotiate with • If we do get into litigation, or we need access to IP from our competition, it is best if we have something that they want • The best patent litigation defense is a counter suit using our IP • To gain revenue from licensing • Our diagnostic businesses license tests • Method of measuring vitamin D – Developed by the LSMS • Kits sold by Clinical Diagnostics, Systems by LSMS, Method licensed to end users

  5. Why bother? • In one recent dispute Waters • Spent millions of dollars in legal fees • Were in 7 different courts in three countries • Paid $87 Million in damages • Were kept out of the US market for two years • Thermo Fisher was later sued on the same patent • We settled on very advantageous terms because • We knew about the patent and had designed around it • We had our own IP to use in a countersuit

  6. IP Review • We expect that before any product is introduced to the market it goes through an IP review to make sure there are no issues with infringement of competitors IP. • We don’t expect everyone to become a patent expert • But being aware of IP in your area is part of your job • We don’t expect you to do a detailed analysis of every patent • But you need to know the basics of patent interpretation so that you can understand which patents need the most attention • We don’t expect you to make decisions on complex IP • Pass the information to the IP group, but make sure you get a decision • We do expect each program team to keep an active watch for IP that might impact it and to inform us if there is IP that might cause concern • We will provide training on this in the coming months

  7. What is an invention? • In our business an invention can be a completely new type of product • A handheld x-ray/Raman spectrometer • An improvement of an existing design • A new light source for a UV detector • A method of using a device • To analyze a sample • A manufacturing process • To mold a column fitting • Anything new that we do has the potential to be an invention that we can turn into a patent. • What would you do if a competitor received a patent on your idea that you are implementing in a new product? Can you easily redesign the product?

  8. What do I do if I have made an invention? • We have an invention disclosure process • Write up the invention in the format and submit it to the IP group • We will review it with management and decide to • File a patent application • Keep it a trade secret • Ask for more information • Publicise it if we don’t want to file an application and we want to stop someone else patenting it. • It typically takes 2-3 months to convert an invention disclosure into a patent application once the process is started • We may have several months backlog before starting your invention • Takes a lot of detailed writing by the patent agent/attorney and review by the inventors • Costs around $20,000 from invention disclosure to issued patent depending on complexity • Is published as an application 18 months after filing • If granted, is valid for 20 years from the date of filing

  9. Patent Prosecution • The Patent Office Examiner examines the application and may reject one or more of the claims • There may be several iterations of claims and rejections • Once the application has been filed, only the claims should be changed, the rest is fixed • Sometimes changes to specification are made for clarification, but no new matter should be added • Overall, an invention can take anything from 1 year to 5 years to mature into a US patent • 3-8 years for a European patent • Maybe 10-15 years for a Japanese one • If many continuations are filed, this can stretch to 10-12 years • Hopefully, the end result is protection for our Intellectual Property that allows us to make our products and deters the competition from competing effectively

  10. Summary 1. Identify Inventions • Inventions you make while employed at TFS belong to TFS • It is TFS policy to protect its commercially valuable IP • You must record your inventions so the company can decide whether and how to protect them • Otherwise, we are just giving away your hard work to our competitors 2. Don’t Infringe • You need to know whether patents cover the technology you use in your designs; otherwise you could get TFS into a costly law suit • TFS policy: it is not an option to knowingly infringe a patent we believe to be valid

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