Patent Prosecution – Summary What criteria is used for evaluating disclosures for patenting?

Nearly every interviewed company cited business value and as the two primary criteria for evaluating invention disclosure for patenting. “Business value” had different meanings for different companies, depending on the IP strategy of the companies. For example, interviewees indicated that business value could include coverage for core products and services, exclusivity, freedom to operate, marketing value, and licensing value. Other criteria cited by roughly one quarter of the interviewed companies included detectability of the invention and a determination of whether the invention was better protected via a or a trade secret. Who implements criteria and makes the decisions?

Most interviewed companies (about 3/4) use a patent committee to make filing decisions. These patent committees typically include legal representation from the IP department, as well as business unit representation. When there is a group outside of the patent committee that makes a final decision, that final decision is typically made by the business unit. Most of the remaining companies (about 1/4) implement decision-making solely within the IP department. Company responses were mixed regarding whether the decision-making process was a formal process or an informal process. Of the companies that had a formal process, most employed a checklist, a scorecard, or a metric-based approach.

How do you determine your new patent filing and maintenance fee budgets? Are they combined into one budget or considered separately?

Most interviewed companies used a combination of historical information (e.g., budgets from prior year adjusted for expected growth or decline) and predictive forecasting (e.g., based on expected patent filings and maintenance fees due) to generate annual budgets. In some companies, the IP department has a single overall IP budget, whereas in other companies, each business unit has an IP budget. Typically, new patent filings and maintenance fees are included as separate line items in a single IP budget. Have you undertaken an exercise to prune your portfolio to reduce maintenance fees? If so, describe the motivation and the process.

Every interviewed company had some process for analyzing whether to pay maintenance fees. These analyses are typically done periodically and are driven by maintenance fee due dates. Most companies perform a periodic analysis of whether to pay maintenance fees, with the most common periods being quarterly or annually. At most companies, the criteria for determining whether to pay a maintenance fee based on business value, with most companies using the same criteria for business value that was used to decide whether to file a .

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To what extent, and how, is identified? How are decisions made whether to conduct patent searches and clearance searches?

Among the interviewed companies, in-house attorneys typically have discretion regarding whether to perform a prior art search or clearance search. For those that conduct searches, the searches tend to be performed in-house, either by the attorney or by a technical expert. Several companies utilize software tools specifically designed for performing such searches. A few companies utilize search firms to conduct such searches.

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Patent Prosecution – Detailed Key Takeaways 1) Fortune 500 Energy Company a. What criteria is used for evaluating invention disclosures for patenting? i. Criteria: 1. Patentability 2. How the company intends to use the technology 3. Patent vs. Trade Secret 4. Value to the business (see Value Drivers above) b. Who implements criteria and makes the decisions? i. IP committee (See Organization section for people involved – legal representative, IP manager representative, R&D representative, Business Unit representative) ii. This committee uses the criteria to determine whether to patent or not iii. IP committee makes a recommendation to business management, and the business makes the final decision (typically a General Manager of Business Unit/Department) c. How do you determine your new patent filing and maintenance fee budgets? Are they combined into one budget or considered separately? i. Forecast both filing fees and maintenance fees, and roll them into a single budget ii. Legal department is responsible for forecasting filings in technologies / business units 1. Forecast is done with input from IP managers iii. Bottom-up budgeting. The budget is driven by the forecasted filings and maintenance fees coming due d. Have you undertaken an exercise to prune your portfolio to reduce maintenance fees? If so, describe the motivation and the process. i. Annual process to review portfolio (look at same criteria/value drivers as for filings) ii. This process involves the same people that make filing decisions iii. The bar is raised at different maintenance fee periods 1. E.g., if the value driver is licensing, may pay first maintenance fee and if no licensing activity has occurred, may abandon at the second maintenance fee e. To what extent, and how is, prior art identified? i. Do a patentability search before each filing 1. May do in-house (65-70%) 2. May send out a search request 3. May be an informal process based on familiarity with space ii. For larger projects, may do landscape analysis iii. Also do freedom-to-operate searches for technology close to commercialization f. How are decisions made whether to conduct patent searches and clearance searches? i. Based on consultation with business 2) Fortune 500 Chemical Company

3 a. What criteria are used for evaluating invention disclosures for patenting? i. Have to fit one of (4) commercial reasons to obtain IP (above), must have a commercial nexus (related to business or commercial opportunity), legal requirements ii. Most patent prosecution is done in-house b. Who implements criteria and makes the decisions? i. Primarily IP department, with some input from technical directors (R&D/Engineering) ii. Don’t file a lot of , so the process is less formal iii. Used to have a more formal process with a database to record and review invention records (once filed, goes to docketing system) 1. Now, they are trying to make the process less formal so they can be more agile and file faster (AIA) iv. Responsible reviews with executive director level (reporting to VP) in technology function. v. Go through portfolios every other year (formally) to eliminate irrelevant patents – discuss strategies and what they are trying to accomplish 1. More informally on regular time table c. How do you determine your new patent filing and maintenance fee budgets? Are they combined into one budget or considered separately? i. IP department has a single budget for filings and maintenance fees 1. Track budget on monthly basis ii. CPC is responsible for budget iii. CPC makes decisions, and if there are strong budgetary issues, consults with senior level management iv. More aggressive at later maintenance fee stages v. CPC approves all global filings to control costs and maximize value d. Have you undertaken an exercise to prune your portfolio to reduce maintenance fees? If so, describe the motivation and the process. i. Patents are assigned to attorneys, who are responsible for that portfolio ii. Maintenance fee due dates come up at regular meetings iii. 90-95% filed first in US; then PCT for foreign filings – look to see where fit as the 30-month date approaches 1. At that point, see if program is being pursued within the company. If not, may request no foreign filing or no examination request 2. Due dates drive analysis (for filing decisions, maintenance fees, etc.) 3. More time spent on maintenance fee analysis iv. Able to do this informal analysis because volume is small e. To what extent, and how is, prior art identified? i. Have experts in many technical areas (in some cases, the world’s foremost experts) who are required, as part of their job, to stay abreast of industry developments 1. The majority of the time, these experts identify what is the closest prior art as part of invention record

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2. Attorneys have discretion to ask for prior art search (e.g., an area where company has less expertise), or may do their own search a. Mix of U.S.-based searching and overseas searching (more overseas for state of the art reviews) ii. No formal policy – case-by-case basis f. How are decisions made whether to conduct patent searches and clearance searches? i. If anything is worthy of an opinion for clearance purposes, they will order a search 3) Global Chemicals and Materials Company a. What criteria is used for evaluating invention disclosures for patenting? i. Should be associated with products. ii. Scientists are very adept at locating prior art. So they’ve usually done their own searches, and so normally a separate prior art search is not performed 1. Search less than 50% of the time 2. Sometimes they don’t care if there is close prior art. They file so few applications/year, that there is value in proceeding regardless 3. Sometimes they file for deterrence (publication) a. Also, do some research disclosures 4. They do look at enforcement considerations (detectability) 5. But, it is a case-by-case basis. Depends on needs of BU and the technology. 6. If a disclosure comes in, they’ll either file, publish, or keep as trade secret 7. Is any effort made to compile list of more significant trade secrets? a. They are in the process of doing that. b. Who implements criteria and makes the decisions? c. How do you determine your new patent filing and maintenance fee budgets? Are they combined into one budget or considered separately? i. All in one budget. See above for more explanation. d. Have you undertaken an exercise to prune your portfolio to reduce maintenance fees? If so, describe the motivation and the process. i. Done quarterly at quarterly meeting. They run an annuity report and discuss whatever is due at the meeting. ii. Years ago this wasn’t being done as strategically as it is now. e. To what extent, and how is, prior art identified? i. How are decisions made whether to conduct patent searches and clearance searches? 4) World-Wide Fortune 100 Industrial Company a. What criteria is used for evaluating invention disclosures for patenting? i. Teams assess whether a granted patent on the invention would advance the BU’s IP strategy 1. Does it affect a product or process used by the Company 2. Block alternatives to the Company’s products, processes 3. Does it affect their clients in some way 4. Licensing? Leverage?

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5. Approaches a. Some teams use voting approach (including perceived patentability and commercial merit) i. Checklist with pluses and minuses, you tally it, it must meet a certain threshold b. Others, it’s more of an objective inquiry based on known information 6. Trade secret vs. patent a. No set criteria or formula for making the decision b. Every BU does it differently. c. Based on value. d. May also be based on historical reasons – the BU has historically kept this type of thing as a trade secret e. From Darryl’s perspective, with today’s analytical techniques, etc., he thinks fewer things are being kept as trade secrets simply b/c it’s not feasible. b. Who implements criteria and makes the decisions? c. How do you determine your new patent filing and maintenance fee budgets? Are they combined into one budget or considered separately? i. Prepared based on actual spend from prior year, with growth or decline factor. Then, adjusted accordingly based on what you know is going on in the business cost center ii. This is done at the BU level. Then they all roll up iii. Don’t build it from ground up. This is what he did at prior company. It was a pretty big task. iv. Amazed at how close the budget comes in to actuals each year v. They involve ICM people, not IP attorneys. By involving the business in the budget, that way the business doesn’t get upset with the IP section, b/c the business was the one that helped make the budget. 5) Water and Wastewater Treatment Products/Systems Company a. Patent prosecution decisions are made by each business unit with support of the IP department. Each business unit uses a similar general, informal process to make patent filing decisions. Each business unit has their own Operating Patent Committee to implement patent decision-making. b. Most provisional patent applications are prepared and filed by the Company. However, non-provisional applications and patent prosecution are typically performed by outside counsel. c. The IP budget is centralized so there is one single budget for the Company. The individual business units are not charged individually. d. The central IP team reviews upcoming annuity/maintenance fees, determines areas of interest (drop cases or need to file new cases in areas), and discusses strategy with business units. The frequency of such reviews of annuities/maintenance fees are typically quarterly. i. The Company relies on its technologists to identify prior art, including personal knowledge or from searching. The Company has a subscription to TotalPatent

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6) World-Wide Fortune 100 Industrial Company a. What criteria is used for evaluating invention disclosures for patenting? i. See Below b. Who implements criteria and makes the decisions? i. BU generally determines— 1. If we want to file 2. The purpose of the filings 3. The extent it wants to be involved 4. Process implies a case by case determination of BU involvement from a possible range of BU involvement ii. PRB—Provides the BU input as to business value; 1. Some discussion of what to expect from claims in actual patents (e.g. “If that is all the claim scope we can get? Then it is not worth it!”) c. How do you determine your new patent filing and maintenance fee budgets? Are they combined into one budget or considered separately? i. One worldwide patent budget; trademark and risk management team and patents ii. Senior corporate counsel works with supervisors from legal and BUs to establish a budget –zero based budgeting in concept but not literally done as zero based budgeting 1. Use PCA software a. Cost estimate, based on company history, used to create case by case projections b. Put various strategies into software and software helps project costs 2. IP Manager software used for a. Estimate of annuity payments for the next year iii. Senior corporate counsel crunches and manipulates the data and variables until she is able to compile a reasonable budget d. Have you undertaken an exercise to prune your portfolio to reduce maintenance fees? If so, describe the motivation and the process. i. Company pays and reviews maintenance fees on a quarterly basis 1. Always some reduction on a case by case basis 2. Have gone through some periods when there were “budget constraints”—in those years the Company has to do a more in- depth review and cut some annuities 3. In such cases, the Company will refer to their lane strategy classifications and look to reduce the number of lower value cases. e. To what extent, and how is, prior art identified? i. “About 100%” of cases have an external prior art search ii. Went to this system of 100% analysis 2-3 years ago 1. Did a rapid improvement workshop a. Mapped out process and analyzed why it took so long

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i. Learned one of the big delays in the handling of applications was the attorney picking up the file and working with it iii. Now invention notification form is sent out for prior art search and tracking iv. The notification form generates from the outside vendor an Invention package 1. Get slide deck and detailed results within two weeks of service vendor notification 2. Indian firm—doing search since 2007 but expanded to more rapid process done for all notifications two years ago a. If they have questions they can call the and get more background materials b. Vendor works with the patent analytics team v. Patent analytics team 1. MBA/engineer leader 2. Used for searching due diligence and M&A patent analysis 3. 3 people—Formerly Company engineers but now in patent department—group head also MBA 4. Team existed before work was outsourced to India f. How are decisions made whether to conduct patent searches and clearance searches? i. Product clearance 1. Risk Management team directs what amount of clearance is appropriate 2. Go to patent analytics team for actual search 3. Will sometimes do additional searches 7) Large Company in the Automotive Industry that is a Wholly Owned Subsidiary of an International Parent Company a. What criteria is used for evaluating invention disclosures for patenting? i. A scorecard is used to closely monitor filing decisions. The scorecard results correspond to tiers that are used to determine if a filing is appropriate and which countries to file in. For example, one tier corresponds to invention disclosures directed to inventions that are definitely planned to be commercialized and filings are made in a first group of countries. A second tier corresponds to invention disclosures directed to inventions that will probably be commercialized and filings are made in a second group of countries. A third tier corresponds to invention disclosures directed to inventions that are a good idea and good for licensing or sale opportunities down the road, but probably will not be commercialized are filed in a third group of countries. The third tier may be used for inventions that are not core to the business but may be useful for freedom-to-operate or licensing purposes. A fourth tier corresponds to invention disclosures directed to inventions that probably will not be commercialized and do not have much potential for licensing or sale opportunities. No filings are made for the fourth tier of disclosures.

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b. Who implements criteria and makes the decisions? i. Technology group directors and patent attorneys work together, but technology group directors have strong input. Technology group directors get R&D teams to submit disclosure. Depending on R&D group, meetings are held monthly or every other month to review the disclosures. The meetings are run by IP department. c. How do you determine your new patent filing and maintenance fee budgets? Are they combined into one budget or considered separately? i. Budget for IP department is provided by the General Counsel and the amount is based on history of previous years. Business Groups are charged back a percentage of fees for patent filings. The decisions regarding filings are driven by scorecard and technology. The filing and maintenance fees come from the same budget. d. Have you undertaken an exercise to prune your portfolio to reduce maintenance fees? If so, describe the motivation and the process. i. Annuity decisions are made using a quarterly review process with patent attorneys and technology group directors. The technology group directors tell patent attorney if payment should be made on cases individually reviewed. e. To what extent, and how is, prior art identified? i. During review of disclosures, in-house attorney does cursory prior art search. Some of the prior art searching performed internally by IP department or business and other searching is performed by outside search firm. The criteria to determine when the search is done internally v. externally is based on work load and familiarity with technology. f. How are decisions made whether to conduct patent searches and clearance searches? i. Attorneys make decisions whether to conduct patent searches and clearance searches. 8) Subsidiary of a Multi-National Industrial Conglomerate a. Patent prosecution decisions and budgets are set by each subsidiary and the centralized group is not involved in managing prosecution for most subsidiaries on a day-to-day basis. Each subsidiary uses a similar general, formal process and set of criteria to make patent filing decisions but implement the process and criteria differently depending upon the nature and importance of IP to each particular subsidiary. Each subsidiary and/or business line has their own IP committee review to implement patent decision-making. The Company is trying to improve its ability to have patenting decisions communicated across subsidiaries in case more than one subsidiary or business line would benefit from the use of new IP. The centralized group assists with this process but the group is finding this to be a challenge and is trying to develop processes to improve in this area. b. Approximately 80% of patent prosecution is performed by outside counsel while 20% is handled in-house. The specific ratio varies by subsidiary. c. The Company does not perform R&D for the sake of performing R&D so patenting decisions are focused on business strategy and products.

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d. Maintenance fee decisions are handled by the subsidiaries’ IP review committees that also handle filing decisions. The frequency of such reviews are based on the nature and needs of each subsidiary or business line. The centralized group seeks to see if IP that is not needed in one subsidiary can be used in another. The Company is trying to develop ways to do this more effectively. e. Methods for identifying prior art is handled within each subsidiary but there are enterprise-wide search tools that are available to help. The Company has a subscription to TotalPatent and Innography and the legal department helps drive the process. 9) International Transaction Processing and Payment-Related Products and Services Company a. IPR, CBMs, and Alice have challenged the company’s effort to build its portfolio because the likelihood of a patent being upheld if challenged has decreased. To adjust for the issues, the IP legal team is making changes to the patent review committees. The result has been that more invention disclosures are being rejected or sent back for additional information/detail. In addition, as the Company develops best practices for prosecuting patents in the new environment it is sharing these practices with all of its outside counsel prosecution firms. b. The invention disclosure review process does not currently include the use of a formal scorecard. However, the Company is implementing new software to facilitate communication between the IP legal team, the business units, and patent review committees. The use of a more formal scoring system for invention disclosures will begin in one business unit in the near future facilitated by the use of the new software and will include the assessment of the potential commercial value of the invention. c. The Company is currently in a transitional period regarding patent filing budgets. Traditionally, there was one centralized budget managed by the legal team for all U.S. filings and the business units had to pay for their own non-U.S. filings. The IP legal team provides guidance to the business units regarding which non-U.S. locations should be considered based on patentability and other issues. d. Business units make maintenance fee decisions because they pay for the maintenance fees out of their own budgets. Because the patent portfolio is relatively young, the Company has not yet had to deal with maintenance fee challenges. The company uses a third-party service to pay maintenance fees. e. The Company does not automatically perform prior art searches for all new invention disclosures. As disclosures are submitted, each is assigned to an attorney on the IP legal team and if the attorney suspects that prior art may exist then a search will be performed, primarily of internally-developed prior art. If prior art is found then it is sent to the review committee and/or the inventor to consider how the disclosure can be differentiated from the prior art. Inventors do not search for prior art themselves and aren’t encouraged to unless there is a very specific reason. i. All prosecution work is done by outside counsel. 10) Fortune 500 Semiconductor Company a. What criteria are used for evaluating invention disclosures for patenting?

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i. Metrics are used in a more structured way to analyze and score inventions to asses if the inventions are: 1. Innovative 2. Strategic, 3. Detectable. ii. Score can be updated at different stages. b. Who implements criteria and makes the decisions? i. A patent attorney manages a committee and has the final decision. ii. Committees are specialized by technology areas. iii. There is no set score for filing a patent application, the decision is based partly on the desires to develop the portfolio in particular areas. For example, a patent application may be filed for a lower scoring invention in an area where the portfolio is weaker, whereas a higher scoring invention may not have a patent application filed in an area where the portfolio is already strong. c. How do you determine your new patent filing and maintenance fee budgets? Are they combined into one budget or considered separately? i. IP department has a single budget for prosecution and maintenance fees. ii. Budget is maintained relatively constant. iii. Budget is determined by the number of patents desired to be filed and the number of patents desired to be maintained in the portfolio. Increased maintenance fees have an impact since more patents may need to be pruned to allow budget for filing new applications. iv. CEO and General Counsel also agree to the budget amount. v. Litigation budget is unknown and is operated by paying costs as accrued. Costs have not been significant and can be absorbed by the company. Litigation usually involves trolls rather than competitors. d. Have you undertaken an exercise to prune your portfolio to reduce maintenance fees? If so, describe the motivation and the process. i. The company is putting a lot of effort in pruning the portfolio. They analyze the patents and when one is pruned, the rest of the is considered for pruning in the future as well. ii. The process for deciding whether or not to let a patent lapse is similar to the procedure for deciding if patents should be filed, considering the same concepts and metrics. e. To what extent, and how is, prior art identified? i. The extent to which prior art is identified varies. 1. Usually, prior art is identified by internal experts. 2. Sometimes, at the discretion of the Attorneys, a prior art search is commissioned from outside searchers in cases where relevant art is suspected but not identified in-house. f. How are decisions made whether to conduct patent searches and clearance searches? i. Usually, the company relies on in-house experts for patentability searches, at the discretion of the attorney in charge. ii. Inventors are instructed not to conduct patent searches.

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iii. Clearance or freedom to operate searches are not usually conducted. 11) Fortune 500 Energy Company a. Process – i. R&D or project manager of business unit will review new invention disclosure with key business unit members and IP management team to determine whether to pursue IP 1. Factors include how IP is aligned with business strategy, how valuable IP could be potentially, how important to business, how important to keep competitors out ii. Advice provided by IP management team – decision held with business b. Budget Decisions i. Determined based on previous year’s budget, expected changes in business environment, expected business activity relative to previous year ii. IP budget split amongst various business groups – split is determined based on factors listed above for each business unit iii. Pruning portfolio 1. Look at portfolio one or two times a year 2. Determine whether maintenance fee is worth paying in various countries based on business expectations, value of IP, trend in technology, etc. c. Prior art i. Identified on a case-by-case basis ii. Internal team may perform prior art search based on whether the project is of particular importance 12) Communications Equipment Company a. Process – i. Patent review boards meet periodically and are divided along different technology lines 1. Boards staffed with preparation and prosecution attorneys, senior engineers in a particular field, and occasionally an engineer that is part of the IP department 2. Identify innovative ideas that are likely to be used by others and detectable b. Budget Decisions i. Use historic rate of approval of submissions to determine expected number of applications ii. Portfolio management 1. Look at portfolio at various times during lifecycle 2. Identify value – make calls based on budget based on importance, where pending, etc. c. Prior art i. Identified on a case-by-case basis by a centralized group ii. If 102 art identified, filing strategy reconsidered 13) High Tech Company a. Process – i. Engineer has idea – write disclosure submits

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ii. Attorney sit with engineer – do prior art search with engineer – help engineer write claims – put together presentation for patent committee iii. Engineer brings presentation on patent committee – indicates likely 1. Long term market adoption or potential usage 2. Magnitude of 3. Expected value iv. Business unit determines whether market exists v. Outside counsel for drafting – vi. In house – work closely on drafting claims b. Budget Decisions i. IP department recommends – Business unit decides budget ii. IP department provides business unit with regular updates iii. Monthly portfolio meetings between business unit and IP team to evaluate allowed cases, PCT filings, national phase entry, maintenance fees 1. Since review is done with business unit – IP decisions are based on market knowledge and competitor operations iv. Prior art searches are limited since research and development of business unit is so broad, and relevant art is cited in pending applications v. Use Anaqua software – evaluate the usefulness of tool with regard to costs 14) World-Wide Fortune 500 Drug Company a. What criteria is used for evaluating invention disclosures for patenting? i. Primary business is around new therapeutic drugs (small molecule drugs and biologics) 1. So disclosures centered around that core get the most focus b/c it has biggest effect on business ii. Other stuff around the fringe (diagnostic devices, delivery devices, etc) get less focus, but are still relevant iii. No formal patent committees 1. Instead, disclosure is submitted and ends up on IP attorney’s desk. IP attorney reviews and reaches out to technical experts. If it looks good/promising, they proceed with a patent application. 2. Disclosures are often submitted before creation of program team. May take years for a program team to actually be created. iv. Publication 1. Researchers do publish their findings. R&D runs a workflow process for publications. IP attorney is on the list of people that need to approve the publication. b. Who implements criteria and makes the decisions? c. How do you determine your new patent filing and maintenance fee budgets? Are they combined into one budget or considered separately? d. Have you undertaken an exercise to prune your portfolio to reduce maintenance fees? If so, describe the motivation and the process. i. They do this yearly, or more often if there is a budget challenge 1. Absolutely a part of their practice 2. Main motivation is saving money. They don’t want to spend money on filings that don’t help the business

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ii. The process is led by the IP team. IP team gets the final say b/c it’s IP’s (OGC’s) budget iii. Methodology 1. Much of portfolio is made up of patents and applications that claim potential new drugs and biologics. a. Some drugs/biologics don’t pan out, and so the corresponding IP is abandoned. For example, perhaps an application was filed 2 years ago. But research results show that the drug/biologic is a no-go (e.g., killed mice). So at year end, they get rid of it. i. Different from high-tech, where many patents may have value even after the technology is outdated or abandoned. 2. They don’t have meta-data in their db to grade their assets. Rather, they rely on IP attorneys to know what’s important. 3. It’s a smaller portfolio, so it’s feasible to manage without significant systems in place like metadata classification. e. To what extent, and how is, prior art identified? i. Yes, they do prior art searches. ii. They tend to stick with domestic firms – law firms or other firms that provide search services f. How are decisions made whether to conduct patent searches and clearance searches? g. Non US-filings i. Revenue is mainly derived from US and Europe, so those are key jurisdictions. ii. Japan is also more important iii. If something is in development, it’s filed more broadly than just US, Europe, Japan iv. They do have foreign filing guidelines that look at type of invention (molecule vs. packaging) and therapeutic area. But ultimately, the IP attorney is expected to use their judgment v. Business (commercial and R&D has bought into the guidelines) 15) Aerospace and Defense Company a. Inventors are incentivized by staged payments and awards: i. At filing, ii. At issuance, iii. After issuance, based on real value, e.g. when the patented invention is incorporated into a commercialized product. b. A Patent Management Committee reviews submitted invention disclosures, makes filing decisions, maintenance decisions, etc. c. Patent Management Committee uses subject matter experts to determine: i. Novelty, ii. Nonobviousness, and iii. Business case.

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d. Once the Patent Management Committee approves something for filing, the patent department will search it and ultimately approve the Record of Invention for filing. e. In house metric of IP success is number of records of invention submitted and approved for filing. i. Filing is managed in-house but quality appears to be primarily OC responsibility, with tracked OC metric being primarily throughput (applications filed per unit time). 16) International Industrial Conglomerate a. OPC reviews submitted invention disclosures, makes filing decisions. b. Budget: three complexities, different costs. c. End-of-matter billing. d. Internal goal of 4 months to filing. e. Note: in the context of the patent prosecution discussion, we discussed the portfolio management objective. It is very difficult to manage over time. Company aspires to determine on a periodic basis whether a patent is being used in a product, but it is difficult to get people to perform these reviews. “Hindsight is 20/20.” Many are reluctant to make abandonment decisions because of the possibility that the decision to abandon will be questioned years down the line. 17) Multinational Manufacturing Company a. The IP Group initiates assessment of patent filings with a patent search. The in- house attorney assigned to the matter normally will conduct the initial search. If the subject matter is worth pursuing going forward, based on business value, the attorney will make a recommendation which will be assessed by the IP Group executive management for approval based on the Company’s advisory committee directives and budget. b. The U.S. Group handles about 300 new patent filings every year in the United States. The number includes only original cases. It does not include international filings, e.g., the international IP groups practice set volume of filings for their respective jurisdictions. c. FTO and clearance work is done internally on a regular basis, as needed. d. The availability of IPR filing has not changed our approach. The company employs IPRs on an as needed basis, e.g., as an offensive measure as a defendant in litigation. i. IPR work is handled outside of the IP Group by our litigation team. ii. An IP Group prosecution attorney is usually included as consultant on IP filings. e. The leading factor for the Company as to whether to file a patent application is whether The Company incorporates it on a commercial product. f. The Company does employ a team outside of the core IP Group for management and filing of design patents. A satellite in-house office handles litigation and design patents. The design team will meet with the designers to determine if a filing should be and then decides. No patentability searches are conducted typically. The Hague may serve to change the Company’s approach, but for now changes have been modest.

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g. Prosecution is done with outside counsel. Outside counsel handles docketing and scheduling. Some work is handled in house, depending on bandwidth and institutional knowledge. i. The Company uses a home-grown (custom) docketing system. The docketing system was created just for the Company. The Company has recently decided to employ a third party system to replace the home- grown system. The reason is in part due to the costs of maintaining a custom docket system internally. 18) Large IT Services Company a. The Company’s patent attorneys write and file applications, as does outside counsel (typically specialized, boutique patent firms). Company patent attorneys typically file the most strategically important cases. Important cases are typically 1st generation technology that the Company is developing. About 2/3rds of the patent work for the Company is handled by outside prosecution counsel. b. The driving consideration for patenting is whether the subject matter: 1) Is an important new tech area for the business, 2) Relates to a product for commercialization; 3) Is appreciable from viewing or using the product; and 4) Is viewed as important tech to a competitor. The Company’s decision is more strategic than tactical. c. The decision to file starts with engineering and making the case for importance. From there, the decision can be impacted, rightly or maybe not rightly, on internal politics. d. The Company actively prunes the portfolio. The pruning is done on a case-by- case basis. The reason for pruning is that there may be diminished interest in the technology to the business and to what is perceived by competitors as important. It may be the case that an application has lingered at the PTO process too long and will result in too narrow of protection than is valuable. e. Design patents are less important to the Company’s business presently. f. The IP Group leads and implements decision making involving patenting, but gets input from technical directors and engineering. g. The IP Group has one budget to start. It is tracked on a monthly basis. h. The Company tends not to pursue licensing in or out. It is a very minor component of the IP Group’s efforts. There is no formal patent licensing program. It is proposed occasionally. i. The Company does not have any active efforts to monetize its portfolios. j. The Company does not buy or license naked patents or portfolios. i. The Company does buy businesses which may have patent portfolios to evaluate and value. The IP Group is responsible in those cases for the assessment of portfolios in a company to be acquired. The IP Group looks at such things as whether the filings we were up to snuff, and look for evidence that the Company was trying manufacture a portfolio that would be appealing on paper. 19) Large Internet Software and Services Company a. Invention disclosures are submitted by engineers and others through an internal tool. In-house attorneys have thirty days from the submission of a disclosure to decide whether to file an application. The attorney work with business unit

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leaders and technologists to implement a set of criteria when deciding which inventions should be converted to a patent application. Criteria include: importance of the problem, strength of the invention, commercial relevant the Company and also to competitors, detectability (should the invention be protected as a patent or trade secret?) b. Patent prosecution fees and maintenance fees are proposed as a single overall patent budget (yearly). Evaluation of the patent budget though is performed on a business unit by business unit basis. c. Maintenance fee decisions are handled by the Patent Operations and Analytics team and Portfolio Development team. The frequency of such reviews is typically quarterly. Any decisions to not pay maintenance fees is done primarily for “hygiene” (i.e., based on whether certain assets are needed to meet strategies and goals), instead of cost. d. Methods for identifying prior art include patent engineers searching for prior art and inventors searching using enterprise-wide search tools that are available. i. Decisions regarding the filing of new patent applications is made in conjunction with 20) Healthcare Equipment Company a. Many people are involved in IP decisions. For example, Patent Coordination Meetings are held in each of the business areas to discuss IP matters in which representatives from R&D, commercial/business, and IP Legal are present. This group reviews invention disclosures, makes filing decisions, reviews proposed patent applications, discusses claim scope, and performs patent portfolio reviews. i. Questions when making a decision about what to patent include: 1. Is the invention essential to the product? 2. How easy is it to design around? 3. How attractive of a solution would it be to an interested third- party? ii. If the invention is narrow in scope or easy to design around, patent protection is not sought. iii. The patent estate is reviewed every year to maintain awareness of the maintenance costs and compare the existing portfolio against the company’s evolving business objectives.

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