What Do Startups Need to Know about Patent Law

WHAT DO STARTUPS NEED TOKNOW ABOUT PATENT LAW? JEFFREY SCHOX, ESQ. SCHOX PATENT GROUP LINKEDIN.COM/IN/JSCHOX TWITTER.COM/JSCHOX

Mechanical Software Electrical

MedtechAccuriDelphinus

Software Duo SecurityTwilio

Cleantech AccioMission Motors

Patents suck.• Trolls will sue us• Brad Feld is going to change patent law• We don’t want to play the patent game

Patents suck.• Trolls will sue us *• Brad Feld is going to change patent law• We don’t want to play the patent game *The only factor is whether you infringe (and have money)

Patents suck.• Trolls will sue us.• Brad Feld is going to change patent law *• We don’t want to play the patent game *He cannot. And neither the Supreme Court, Congress, or the PTO will.

Patents suck.• Trolls will sue us.• Brad Feld is going to change patent law• We don’t want to play the patent game * *You don’t have a choice.

Why do startups ﬁle patents?• enforce against a competitor• prevent the patenting by someone else• generate licensing revenue

Why do startups ﬁle patents?• enforce against a competitor *• prevent the patenting by someone else• generate licensing revenue *Takes 4-6 years to get a patent, and costs $3M to enforce.

Why do startups ﬁle patents?• enforce against a competitor• prevent the patenting by someone else *• generate licensing revenue *Patents cost about $40K each. Publication of your invention is free.

Why do startups ﬁle patents?• enforce against a competitor• prevent the patenting by someone else• generate licensing revenue * *It takes a huge effort

Why do startups ﬁle patents?1.2.3.

Why do startups ﬁle patents?1.2.3. increase leverage over a partner

Why do startups ﬁle patents?1.2. deter patent infringement lawsuit3. increase leverage over a partner

Why do startups ﬁle patents?1. stimulate investment or acquisition2. deter patent infringement lawsuit3. increase leverage over a partner

When do I have to ﬁle a patent?Loss of all patent rights in the U.S. if invention was:(1) described in a printed publication, or(2) in public use or on sale in the United States,more than one year before the ﬁling date of apatent application.

When do I have to ﬁle a patent?Preserve patent rights in the U.S. APP public use

When do I have to ﬁle a patent?Preserve patent rights in the U.S. and abroad.PRV APP public use

Is softwarepatentable?

Not ValuableSpeciﬁc Product General Concept Not Patentable

Invention

Biggest Misunderstanding of Patent Law The relationship between: (a) the patentability of an invention, and (b) the infringement of another patent.

Question: Who can make a frosted light bulb? Pat. No. 223, 898 Pat. No. 1,687,510 Edison Pipkin Electric-lamp Frosted light bulbs

Biggest Misunderstanding of Patent LawPioneering Improvementinvention invention

Question: Who can make a frosted light bulb? Answer: No one can. Neither Edison nor Pipkin.

Biggest Misunderstanding of Patent Law 1. An invention may be patentable if it can be distinguished from previous inventions. 2. A product may infringe an existing patent if it contains all of the elements of a claim. These issues are independent of each other.

What Do Investors Want to Hear?1.You have determined what is patentable(and have taken steps to protect your rights).2.You have determined whether you infringeany patent rights of your main competitors.These issues are independent of each other.

How to Develop a MVPS (Minimum Viable Patent Strategy)Before Seed Round:1. File a provisional application.2. Conduct a preliminary freedom-to-operate analysis on your competitors.

How to Develop a MVPS (Minimum Viable Patent Strategy)Before Series A Round:1. File a full patent application.2. Conduct a preliminary freedom-to-operate analysis on all relevant patents.

How to choose a Patent Attorney

Legal Biz Tech

Thanks JEFFREY SCHOX, ESQ. SCHOX PATENT GROUPLINKEDIN.COM/IN/JSCHOX TWITTER.COM/JSCHOX

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What Do Startups Need to Know about Patent Law

by Jeffrey Schox on Sep 25, 2011

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What Do Startups Need to Know about Patent Law — Presentation Transcript