Tips For Cost-Effective Patent Protection

1. Tips For Cost-Effective Patent Protection Mary Anthony Merchant, Ph.D.

2. Overview How Much Does It Cost? What is the goal? Opportunities For Savings Pre-Patent Application Preparation Preparation Filing and Examination Post-Examination DMEAST #10226950 2 Opportunities for savings can be found at all stages of patent preparation and examinationOpportunities for savings can be found at all stages of patent preparation and examination

3. Overview (Pre-Patent App Preparation) Pre-Patent Application Preparation Selection of Patent Counsel Invention Disclosure Form (IDF) Patentability Search Managing Expectations/Budgets Patent Strategy - Provisional, Non-Provisional and/or PCT, International Selection- Does the patent attorney know the technology/some experience in the area, who will really do the work, who will supervise the workSelection- Does the patent attorney know the technology/some experience in the area, who will really do the work, who will supervise the work

4. Overview (Preparation) Preparation of the Patent Application Background Figures Number of Claims Scope of Claims Types of Claims Review and Comment Cycle(s)

5. Overview (Filing and Examination) Filing and Examination What is the goal- short-lived, long-lived technology Information Disclosure Statement (IDS) Assignments, Declarations and Powers of Attorney International Applications Office Actions RCEs/Appeals Continuation/Divisional Applications

6. Overview (Post-Examination) Post-Examination Maintenance Fees/Annuity Payments Leveraging the Patent/Supporting the Patent License Sale Assertion Review With IP Counsel Increased Involvement Can Often Save $

7. Patent Process Overview 7