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Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary Creating and Commercializing Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary Creating and Commercializing your Patent Portfolio “Supersize” your profitability! © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary [email protected] co. il [email protected] co. il

Israel is known for it’s high tech industry – Why? © Copyright Naomi Assia Israel is known for it’s high tech industry – Why? © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary

Israel: A Silicon “Wadi” © Copyright Naomi Assia & Co. – Law Offices, Patent Israel: A Silicon “Wadi” © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary

Recent Amendment to the Research & Development Law Allows the transfer of know-how abroad Recent Amendment to the Research & Development Law Allows the transfer of know-how abroad Allows the transfer of manufacturing abroad © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary

Contributing Factors to Hi-Tech Development in Israel: Funds offered by the Chief Scientist of Contributing Factors to Hi-Tech Development in Israel: Funds offered by the Chief Scientist of the Ministry of Industry & Trade Bi-National Funds Bird - F (U. S. A - Israel) Ciirdf (Canada - Israel) Government Support for Marketing Activities © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary

How do you make money out of knowledge? Commercialize your Patents © Copyright Naomi How do you make money out of knowledge? Commercialize your Patents © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary

Why Commercialize Patents? • Maximize returns on your patents investments with little “out of Why Commercialize Patents? • Maximize returns on your patents investments with little “out of pocket” expenses. • Utilize and profit from dormant patents that has great monetary value. • Promote your technology and strengthen your position in the field of your business – be the market standard! • Create additional shareholder value for your company. • Promote your long term financial and technological strategy. © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary

Why Commercialize Patents? Cont…. . • A change of your company strategy can set Why Commercialize Patents? Cont…. . • A change of your company strategy can set existing patents adrift – make sure you don’t loose your investment! • Patents are often sold to others under an M&A deal to lower costs • R&D companies often focus on developing technology and not making commercial products! R&D Patents are often shelved © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary

Why not to Commercialize Patents? • Run the risk of long and costly litigation. Why not to Commercialize Patents? • Run the risk of long and costly litigation. • Market aggression tactics and risk of repercussions. • Lack of in-house know how. • Problems Identifying profitable patents. • Knowledge of commercialization techniques. • Busy and distracted CEO’s cant focus on maximizing profits through IP enforcement. • Oversight of unseen sources of revenue. © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary

How do you commercialize Patents? • License your IP to those that really need How do you commercialize Patents? • License your IP to those that really need it! • Cross-License your IP in order to lower development costs – create monetary value! • Enforce your rights against Infringers! • Promote market research and technology awareness in your organization • Create and manage a commercial IP enforcement program for your organization. • Centralize “command control” of your patents. • Inventory and understand your own technology! • Explore the applicability of your technology to other fields. © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary

Problems to look out for: • Protect your reputation – try outsourcing enforcement policies! Problems to look out for: • Protect your reputation – try outsourcing enforcement policies! • Beware of “Barking up the wrong tree”. • Redundant patent enforcement – If the technology is valueless, don’t invest in it! • Choose your battles wisely. • Work with professional's!! • Be sure of your facts! © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary

Your Problems Solved! • Use smaller patents firms as your central patents “command control” Your Problems Solved! • Use smaller patents firms as your central patents “command control” to lower cost and get full devotion. • Outsource your dormant and shelved patents to professionals – let them fight for your rights with no risk! • Evaluate your existing patents – identify Worthy Patents!! • Don’t be afraid to litigate! If an infringement is found, you will profit by trial or settlement. • Work on a contingency basis with outsourced patents legal “know-how”. • Build and manage a commercial patents enforcement program. © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary

What is a “Worthy” Patent? • A worthy patent would be valued as a What is a “Worthy” Patent? • A worthy patent would be valued as a derivative of it’s potential profitability. • Which companies are it’s potential infringers? are they multi -national organizations? • The valuation would be calculated based on the anticipated five years of sales and royalties (between 1%-3%). • Some infringers could go for “quick” patent purchases of specific patents with a value of between $50, 000 -$100, 000. © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary

Why act now? • Upcoming reforms with the USPTO: – Limitations on willful infringement. Why act now? • Upcoming reforms with the USPTO: – Limitations on willful infringement. – Limitations on Compensatory damages. • Changing Judicial trends are occurring • Wrongful use of the Judicial System by Patent Troll’s • Enjoy the fruits of your labor now! © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary

Summary • Learn from successful “Patent Rich” companies such as IBM. • Maximize revenues Summary • Learn from successful “Patent Rich” companies such as IBM. • Maximize revenues from your hard earned and accumulated Patents. • Maximize your shareholders return on past and future investments! • Don’t loose track of your technology! • Centralize your patents “Command Control”. • Study changing and adapt to market trends © Copyright Naomi Assia & Co. – Law Offices, Patent Attorney’s and Notary