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“A start up can certainly do a few things to help itself while minimizing legal fees.”

Chinh H. Pham is a technology accelerator. As a registered patent attorney, Chinh has devoted his career to advancing emerging technologies, particularly those innovations born in the Bay State.

Chinh is the Chair of Greenberg Traurig’s Nanotechnology Practice, and Co-Chair of the firm’s Boston Intellectual Property Practice Group. He advises emerging tech companies on strategies for leveraging their IP portfolio for high-value commercial opportunities, introducing them to funding sources, as well as identifying and establishing strategic alliances.

Greenberg Traurig, LLP is an international, full-service law firm with approximately 1750 attorneys serving clients from 35 offices in the United States, Latin America, Europe, the Middle East and Asia. In the U.S., the firm has more offices than any other among the Top 10 on The National Law Journal’s 2012 NLJ 250. For additional information, please visit www.gtlaw.com.

MO: What inspired you to help create the Emerging Technology Practice Group within your firm?

Chinh: Most inventors need savvy business and legal counsel and most innovations need to be nurtured in order to be commercialized. With this in mind, I saw the potential to pool the firm’s strengths in representing venture-backed companies to form a multidisciplinary team dedicated to addressing the unique needs of start-up companies. I collaborated with my Greenberg Traurig colleagues – particularly those in cities that have strong emerging tech sectors such as Boston and Silicon Valley – to help establish the firm’s Emerging Technology Practice. This multidisciplinary industry group focuses on guiding emerging technology companies through all stages of their development, from initial business formation through angel or venture capital financing to initial public offerings and mergers and acquisitions. We represent emerging tech companies in a wide range of industries including life sciences, medical device, biotech, nanotech, video game and interactive media, and software. The group counsels clients on critical issues that impact a start-up’s ability to commercialize its technology and grow as a business, including corporate, IP, employment, tax and immigration law.

MO: What are the most common issues you see clients facing when it comes to filing patent applications and how can they be avoided?

Chinh: The increasingly complex global IP environment is a challenge for tech companies. The record numbers of patent filings around the world means that it is more important than ever for IP departments to ensure that their companies’ products and technologies do not infringe third-party patents.

Tech companies can face aggressive patent litigation from competitors and other companies that thrive on patent and copyright lawsuits. In the product development phase at your company, make sure your research and development teams thoroughly research the design of your current product to avoid litigation.

In addition to above, you may want to consider the following:

Many emerging tech companies focus too much on the specific design of their product or process when pursuing patent protection. By doing so, often times the scope of protection ends up being somewhat narrow and allows competitors to design around it. Instead, companies should consider how competitors can design around the company’s product or process as well as alternative embodiments and include that information in the patent application.

MO: What kinds of strategies do you recommend of an emerging tech startup for leveraging their IP portfolio for high-value commercial opportunities?

Chinh: Emerging tech companies should consider patent strategies early in the design phase rather than waiting for a development of a prototype. This allows a company to establish earlier priority dates over subsequent patent filings by competitors and to establish a competitive advantage.

Emerging tech companies should also consider specific commercial applications for the product or process for which patent protection is being sought. More often than not, a company focuses on protecting its product (i.e., the device, apparatus or system) or the process, thinking that the competitor will need to get a license from the company in order to use the product or process. However, if the competitor pursues patent protection for the commercial uses of the product or process, the competitor can block the company from commercially using the company’s patented product or process. This would then force the company to seek a license from the competitor, and can minimize any leverage the company has over the competitor, especially if the competitor is seeking a license for the underlying product or process from the company.

The same strategy can be employed if the emerging tech company is entering into an industry where there are established competitors. To the extent that the emerging tech company can identify white space, especially those directed to commercial applications of the competitor’s product or process, the emerging tech company can pursue protection of the commercial applications and force the competitor into a cross licensing scenario.

MO: What would you suggest a promising tech startup with little business savvy do if they can’t afford a patent attorney to help them steer the business in the right direction?

Chinh: A start up can certainly do a few things to help itself while minimizing legal fees. In particular, they can look to patent databases to determine if the technology is patentable and whether there are potentially high-value opportunities for the technology. For example, in looking at data available in the US Patent and Trademark Office patent database, information associated with a patent can provide insight into, among other things, early trends in technological advances, and when taken as a whole, it can act as an indicator of potentially high-value opportunities.

For instance, you may look to the number of patents issued or applications filed in your industry to gain insight to a particular trend or focus, the potential for commercial exploitation, and emerging markets for such technology. Alternatively, for a late entrant to a particular tech sector, the number can help determine the risks associated with entering such a market in light of the particular patent landscape.

You might also look to the ownership information of patents to determine, based on the number of potential competitors, if there will be a competitive position within a particular area or application of technology. Even if there are only a few competitors yet the number of patents issued to those competitors is relatively high, it may be an indicator that the opportunity for that particular area of technology may be minimal.

Patent claim scope may also be used as an indicator of available opportunities within a particular area of technology. To the extent that the patent provides broad scope of protection, you can establish a dominant position within a market by minimizing the number of competitors entering that particular area. These are but a few examples of patent information that can be strategically used.

MO: What advice would you give a young company with a great idea who isn’t sure how to protect their intellectual property rights?

Chinh: Of course, I would suggest they speak to a patent attorney to obtain legal advice on how to protect and leverage their intellectual property.

However, there may be a few things that a company can consider. Multiple criteria have been used over the years by companies and/or investors to identify the commercial viability of a technology within an industry. Included among these criteria is timeliness. Whether a commercial venture can maximize its efforts may be based on its ability to harvest the low-hanging fruit, where significant revenue can be generated with little risks in the shortest amount of time.

Another criterion may be the relevance of the research in translating it into a sellable or high-value product. In other words, can you create a market for a product that the customer would like to, needs to or must have?

Another may be the quality of the technology that can put you in a position that creates a competitive advantage. These and other criteria may be helpful in making a decision whether to pursue patent protection.

MO: What are some of the unique and diverse legal needs of the rapidly converging worlds of video gaming, mobile media, music and social networking?

Chinh: Intellectual property has become increasingly important and plays a critical role in what game developers create. Video game development is a practice in technological innovation and creativity — the technology that results is central to game companies’ products and ripe for intellectual property protection. With more developers coming to the table, it is increasingly important for companies in the video game space to protect their technology and innovations in order to gain and keep an edge over the competition. Robust intellectual property strategies that include patents, trade secrets and licensing can help companies develop an advantage in the increasingly competitive gaming industry.

A good patent has financial value which can be leveraged for fundraising, licensing, marketing, and sales. Video game and mobile media technology developers need to have a patent strategy that will help them monetize and protect their technology and products. A strong patent portfolio will help developers position their companies and video games for high value commercial opportunities.

Recent US patent reform presents new IP considerations for the video game industry. Among other changes, the reforms shift the U.S. patent system from a “first to invent” to a “first inventor-to file” system and introduce an accelerated examination option at the U.S. Patent and Trademark Office (USPTO). The patent landscape is changing and video game companies must be prepared to act in order to maintain a competitive edge.





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