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ACCA’S 2001 ANNUAL MEETINGADDING VALUE101 IP Case Study: Follow a New Productfrom Development to LaunchNelson A. BlishSenior Patent AttorneyEastman Kodak CompanyNatalie ButtoCounsel and Assistant SecretaryTropicana Products, Inc.John W. Hogan, Jr.Patent CounselAmerican Home Products CorporationThis material is protected by copyright. Copyright 2001 various authors and the American Corporate Counsel Association (ACCA).Materials may not be reproduced without the consent of ACCA.Reprint permission requests should be directed to James Merklinger at ACCA: 202/293-4103, ext. 326; merklinger@acca.com

ACCA's 2001 ANNUAL MEETINGADDING VALUEFaculty BiographiesNelson A. BlishNelson A. Blish is senior patent attorney for Eastman Kodak Company in Rochester, NewYork, where he is responsible for the Engineering Physics Lab. Mr. Blish has over 22 yearsexperience in intellectual property law and has worked for a number of corporationsincluding Philip Morris and Cooper Industries.Mr. Blish has served on the board of directors of the ACCA Foundation, as president ofACCA’s Houston Chapter, and as past president of ACCA’s Rochester Chapter. He ispresident of the Western New York Chapter of the U.S. Naval Academy AlumniAssociation and has also served as president of the Gulf Coast Chapter U.S. NavalAcademy Alumni Association. He served as the executive vice president of the NavalReserve Association’s Richmond Chapter and as president of the U.S. Naval AcademyAlumni Association’s Richmond Chapter.Mr. Blish has received a number of awards including the Armed Forces Medal, ExpertRifle award, Expert Pistol award, the Navy Commendation Medal, and the AmericanJurisprudence Award for Excellence in Commercial Law. He is also listed as an inventoron a number of pending and issued patent applications including software patents,automotive patents, mechanical patents, and electrical patents. He is the author ofnumerous military and legal articles.Mr. Blish received a BS from the United States Naval Academy. After commissioning as anEnsign in the United States Navy, he obtained an MS from Michigan State University andattended Nuclear Power School and Submarine School. He was assigned to the Polarismissile submarine, USS ALEXANDER HAMILTON (SSBN 617), where he served for threepatrols. Mr. Blish remained in the Naval Reserves after leaving active duty and attendedthe College of William & Mary, Marshall Wythe School of Law, where he received his JD.While at law school, he worked at NASA’s Research Center at Langley, Virginia, and waslicensed as a Patent Agent.Natalie ButtoNatalie Butto is counsel and assistant secretary with Tropicana Products, Inc. (a subsidiaryof PepsiCo, Inc.) in Bradenton, Florida, where she has worked in-house for four years. Sheis responsible for Tropicana’s intellectual property matters, as well as legal issues relatingto marketing, technology, international, contracts, and corporate.Prior to joining Tropicana, Ms. Butto was an attorney with an intellectual property lawfirm in New York for six years.Ms. Butto is secretary of ACCA’s Intellectual Property Committee and serves on the boardof directors for the United Way of Manatee County and The Manatee Players theater(executive committee).This material is protected by copyright. Copyright 2001 various authors and the American Corporate Counsel Association (ACCA).2

ACCA's 2001 ANNUAL MEETINGADDING VALUEMs. Butto earned a BA from Florida International University; a JD from GeorgetownUniversity; and an MBA from New York University.John W. Hogan, Jr.John W. Hogan, Jr. is patent counsel for American Home Products Corporation inMadison, New Jersey. His responsibilities include varied aspects of patent practiceconcentrating on prosecution, opinion, licensing, and counseling in the pharmaceuticalarea.He was senior patent attorney for American Cyanamid Company prior to its merger withAmerican Home Products working with the agricultural group.He currently serves on the Executive Committee of ACCA’s Intellectual PropertyCommittee and is a member of the American Intellectual Property Law Association andthe New Jersey Intellectual Property Law Association.Mr. Hogan received his BS from the Pennsylvania State University and his JD fromFranklin Pierce Law Center.This material is protected by copyright. Copyright 2001 various authors and the American Corporate Counsel Association (ACCA).3

ACCA's 2001 ANNUAL MEETINGADDING VALUEIP Case Study: New Product from Development to LaunchOutline/Checklist submitted by:Nelson A. Blish, Senior Patent Attorney, Eastman Kodak CompanyNatalie Butto, Counsel and Assistant Secretary, Tropicana Products, Inc.John W. Hogan, Jr., Patent Counsel, American Home Products CorporationProduct Development - Patents & Trade Secrets Patent vs. Trade Secret– Definitions and Attributes Trade Secret Patent– Trade Secret Considerations Confidentiality Reverse Engineering Hypothetical Product– Patent Considerations Timeline Drafting the application/Scope of Claims– provisional rights– literal infringement vs. doctrine of equivalents– protection needed for hypothetical product– Filing the Application publication assignment– International rights Patent Marking– United States– International Patent Clearance– Getting a patent does not guarantee right to use– Clearance early in product design– Design around– Opinion (or not) Patent Non-Infringement– Direct Infringement– Doctrine of equivalents– Means plus function claims Validity– File History– Prior art not considered by the examinerThis material is protected by copyright. Copyright 2001 various authors and the American Corporate Counsel Association (ACCA).4

ACCA's 2001 ANNUAL MEETINGADDING VALUEProduct Launch Trademark & Copyright Trademark Clearance– Search/opinion– 3rd parties Trademark Registration– Use/Intention to use– Scope - classes of goods; countries Trade Dress Use of Trademark & Copyright in Marketing/Advertising– TM/ symbols– Brand equity– CopyrightThis material is protected by copyright. Copyright 2001 various authors and the American Corporate Counsel Association (ACCA).5

ACCA's 2001 ANNUAL MEETINGADDING VALUEIP Case StudyCounsel CoolerAn Educational BeverageIP Case StudyNatalie ButtoJohn HoganNelson BlishThis material is protected by copyright. Copyright 2001 various authors and the American Corporate Counsel Association (ACCA).6

ACCA's 2001 ANNUAL MEETINGADDING VALUEHypo product:Counsel CoolatorMachine that dispenses aneutraceutical beverage, whichallows counsel to “digest”information learned in ContinuingLegal Education Courses.Definitions & AttributesTrade SecretMeans information, including a formula,pattern, compilation, program, device,method, technique, or process, that:(i) derives independent economicvalue, actual or potential, from not beinggenerally known to, andThis material is protected by copyright. Copyright 2001 various authors and the American Corporate Counsel Association (ACCA).7

ACCA's 2001 ANNUAL MEETINGADDING VALUE(Continued)not being readily ascertainable by propermeans by, other persons who can obtaineconomic value from its disclosure or use; and(ii) is the subject of efforts that are reasonableunder the circumstances to maintain itssecrecy.Uniform Trade Secret Act, Section 1Definitions & AttributesTrade SecretbStateLaw (UTSA, tort)bNo expiration datebNo protection from independent discoverybMust be kept secretbMay be patentable, but not requiredThis material is protected by copyright. Copyright 2001 various authors and the American Corporate Counsel Association (ACCA).8

ACCA's 2001 ANNUAL MEETINGADDING VALUEDefinitions & AttributesPatentA patent is:A grant from the Federal Governmentwhich gives the patent owner an exclusiveright to prevent others from:(continued)Making;b using; orb sellingthe patented invention.bThis material is protected by copyright. Copyright 2001 various authors and the American Corporate Counsel Association (ACCA).9

ACCA's 2001 ANNUAL MEETINGADDING VALUEDefinitions & AttributesPatent Federal Law Limited duration (generally 20 years) Provides protection from independentdiscovery Must be disclosed in order to receive Must be patentable (new, useful, unobvious)Trade Secret ConsiderationsConfidentialityLoss of trade secret byunprotected disclosure. Generally,must actively maintain itsconfidentiality. Examples:This material is protected by copyright. Copyright 2001 various authors and the American Corporate Counsel Association (ACCA).10

ACCA's 2001 ANNUAL MEETINGADDING VALUE(continued)Put employees on noticeb Post cautionary signs or documentlegendsb Restrict visitorsb Divide process into stepsb Use unnamed or coded ingredientsb Lock up secret documentsbTrade Secret ConsiderationsReverse EngineeringCompetitors are entitled to buy yourproduct and analyze it in detail in anattempt to copy it.This material is protected by copyright. Copyright 2001 various authors and the American Corporate Counsel Association (ACCA).11

ACCA's 2001 ANNUAL MEETINGADDING VALUETrade Secret ConsiderationsReverse EngineeringWill putting the hypothetical product onthe market disclose the trade secret?If yes, trade secret protection may notbe the best protection.Trade Secret ConsiderationsHypothetical ProductbCounselCoolatorbCounsel CoolerThis material is protected by copyright. Copyright 2001 various authors and the American Corporate Counsel Association (ACCA).12

ACCA's 2001 ANNUAL MEETINGADDING VALUEPatent ConsiderationsTimelinebPatentstake time to grant (3-5 years)bPublished after 18 monthsbWhenis product launch planned?Patent ConsiderationsTimelinebConsiderwhether your product will beobsolete before the patent is granted.bProvisional application or nonprovisional application.This material is protected by copyright. Copyright 2001 various authors and the American Corporate Counsel Association (ACCA).13

ACCA's 2001 ANNUAL MEETINGADDING VALUEPatent ConsiderationsDrafting the application/Scope of ClaimsProvisional Rightsbavailable for applications filed on or afterNovember 29, 2000bmust be published applicationbmust provide actual noticebclaims “substantially identical” in publishedapplication & granted patent.breasonable royaltyPatent ConsiderationsDrafting the Application/Scope of ClaimsLiteral Infringement vs. Doctrine ofEquivalentsbIsD.O.E. D.O.A.?bvary scope of claimsbtry to “design around” claims and redraftThis material is protected by copyright. Copyright 2001 various authors and the American Corporate Counsel Association (ACCA).14

ACCA's 2001 ANNUAL MEETINGADDING VALUEPatent ConsiderationsDrafting the Application/Scope of ClaimsCounsel Coolerbprovisional applicationbclaimsto active ingredient, beveragecontaining active ingredient, process ofmaking active ingredient method of using toenhance memory/learning.Patent ConsiderationsDrafting the Application/Scope of ClaimsCounsel Coolatorbprovisional applicationbclaimsto activation device, method ofactivating active ingredient, claims todispenser having the activation device.This material is protected by copyright. Copyright 2001 various authors and the American Corporate Counsel Association (ACCA).15

ACCA's 2001 ANNUAL MEETINGADDING VALUEPatent ConsiderationsFiling the Application - PublicationbU.S. applications filed after November 29, 2000published after 18 monthsExceptbprovisionalsbabandoned applicationsbapplications under secrecy orderbdesign applicationsbre-issuesbrequest not to publish*Patent ConsiderationsFiling the Application - PublicationRequest Not to Publishbinvention has not and will not be filed in anothercountry which publishes.bCAREFUL - must notify PTO within 45 days ifsubsequently filed in another country or applicationwill become abandoned.bMay be rescinded at any time.This material is protected by copyright. Copyright 2001 various authors and the American Corporate Counsel Association (ACCA).16