354b The Relationship Between Non-IP Intellectual Assets and IP

Mark Catan, Miles & Stockbridge PC, 1751 Pinnacle Drive, Suite 500, McLean,, VA 22102-3833

Consideration of non-IP intellectual assets is a useful tool in devising how best to "game" the patent system. This notion flows from the idea that patents are derived from non-IP intellectual assets. The intellectual asset perspective can help companies develop more efficient and effective internal processes for developing IP, which is what this presentation is about. The ideas that flow from this perspective are consistent with the evolving areas of consensus relating to patent strategy. These includes the concept that patents are a creative outlet in themselves, not a derivative of other design processes; that effective patenting should employ perspectives from multiple disciplines; that knowledge of the patent landscape should feed into the definition of a new product's value proposition; etc. Certain broadly accepted premises flow into the analysis and will also be presented. These include how effective processes for gaming the patent system naturally generates targets for structured innovation processes. A proven analysis tool kit will be presented which is designed to help patent applicants find the most effective tactics for protecting a given technology. The latter is particularly useful for companies who ask "now what do we do?" after learning about the impact of the Supreme Court's KSR decision.