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PATENT LAWFOR ENTREPRENEURSMay 28, 2013FRANCISLAWOFFICEPLLCCOPYRIGHT 2013 FRANCIS LAW OFFICE PLLC
Commercialization Moving a product into the marketplace fromthe IDEATION stage is not easy, it takes:1. Money2. A realist...
I have an idea…now what?1. Do your own search on the internet• www.freepatentsonline.com• www.alibaba.com2. Work with your...
Types of Patent Searches Pre-filing search: narrow in scope and costeffective• Has anyone else filed for this invention?...
Forms of Intellectual Property Patents – Protects useful things and methodsinvented by man. Copyright – Protects the tan...
When Protection Attaches Patents – When the patentissues…sometimes backdated. Copyright – When the work is put into atan...
Types of Patents Utility – protects novel inventions havingfunctional usefulness Design – protects the ornamental novelt...
Intellectual Property IssuesEXAMPLES Investigate potential infringement issues• Determine whether your products and servi...
Intellectual Property IssuesEXAMPLES Developing a distinctive identity• Brand name or company name may createmarketplace ...
Inventorship IssuesJoint Inventors have equal rights to thepatentObtain assignments prior to havingsomeone work on an inv...
 DO NOT make any non-confidential disclosures priorto filing a patent application• 12 month grace period in the US• NO gr...
 Perform your own initial search to see if yourconcept is already commercialized and/orpatented Beware of Invention Subm...
 Make all agreements in writing Don’t solicit money from friends and family Seek money from “qualified” investors using...
 Find a patent attorney that fits your needs• Big Firm vs. Boutique Firm vs. Sole Practitioner• How many applications hav...
Expect Questions… What Problem Does Your Invention Solve? What Is Different Than Other Products AlreadyAvailable? What ...
Patent “Reform” UpdateSept. 16, 2012• Assignees can now file patents• Limited post-grant reviews (9 month window)• “Gotcha...
Patent FAQQ. Should I ask a patent attorney to sign anNDA?A. No, it only makes you look silly.Why? You already have attorn...
Patent FAQQ. Why shouldn’t I put my patent in myoperating company?A. To protect it from lawsuits.Why? If your operating co...
Patent FAQQ. My company’s employee handbook says I have toassign any invention I make while employed by themback to the co...
Patent FAQQ. What happens if my patent attorneycontributes something towards the inventionthat ends up in the patent claim...
Patent FAQQ. How much does a utility patent cost?A. It all depends on the subject matter, number ofclaims, size of the inv...
Patent FAQQ. How long does it take to get a patent?A. It all depends on the patent examiner andnovelty of the invention, b...
 Court ordered compulsory license…in thepublic interest. A legal infringement. A medical practitioners performance of am...
Experimental Use Experimental use will not normally be deemedpatent infringement. If experimentation is the "business" o...
A downloadable copy of this presentation will beavailable on www.francis-law.com later today.Open Q&A PeriodCopyright 2013...
THANK YOU!Jim FrancisFrancis Law Office PLLC1025 Dove Run Rd, Suite 201Lexington, KY 40502www.francis-law.comjim@francis-l...
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i2b Conference Patents Presentation May 28 2013

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Presentation on intellectual property law issues for enterpreneurs

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Transcript of "i2b Conference Patents Presentation May 28 2013"

  1. 1. PATENT LAWFOR ENTREPRENEURSMay 28, 2013FRANCISLAWOFFICEPLLCCOPYRIGHT 2013 FRANCIS LAW OFFICE PLLC
  2. 2. Commercialization Moving a product into the marketplace fromthe IDEATION stage is not easy, it takes:1. Money2. A realistic and robust business plan3. Intellectual property issue identification4. Protection of intellectual property5. A risk management strategy6. A trusted team of advisors7. …and more MoneyCopyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  3. 3. I have an idea…now what?1. Do your own search on the internet• www.freepatentsonline.com• www.alibaba.com2. Work with your local Kentucky SBDC/ICCOffice• Market research• Business plan3. Contact a patent attorney for a goodpatent/prior art searchCopyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  4. 4. Types of Patent Searches Pre-filing search: narrow in scope and costeffective• Has anyone else filed for this invention? Research clearance: broader than pre-filing• How are others solving this specific problem? Landscape search: broad in scope, assessesthe competitive environment• What is the competition doing in this category?Copyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  5. 5. Forms of Intellectual Property Patents – Protects useful things and methodsinvented by man. Copyright – Protects the tangible expression ofhuman thought…and vessel hulls. Trademark - Protects the way we identify thesource of goods and services. Trade Secret – Protects confidential informationthat provides a competitive advantage.Copyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  6. 6. When Protection Attaches Patents – When the patentissues…sometimes backdated. Copyright – When the work is put into atangible form. Trademark - Upon first commercial use. Trade Secret – Upon creation and protection.Copyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  7. 7. Types of Patents Utility – protects novel inventions havingfunctional usefulness Design – protects the ornamental novelty ofman-made creations Plant – protects invented or discovered plantswhich are stable and reproduced by asexualreproduction, and not a potato or other edibletuber reproduced plant. Provisional – doesn’t protect an invention,just provides an opportunity to quickly obtaina “priority date” for the inventionCopyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  8. 8. Intellectual Property IssuesEXAMPLES Investigate potential infringement issues• Determine whether your products and servicesmay potentially infringe the patents orcopyrights of others Assignment of intellectual property rights• Employees generally must assign patent rightsbut independent contractors generally do not• Employers should explicitly state their IP policyand have employees sign it• Contractors should agree to assign IP rightsprior to workingCopyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  9. 9. Intellectual Property IssuesEXAMPLES Developing a distinctive identity• Brand name or company name may createmarketplace confusion or even infringe thetrademarks of others Identifying and naming all inventors• If someone contributes something that isincluded in a patent claim… they are aninventor• Inventors have equal and independent patentrights unless they agree otherwise• Excluding an inventor can make the patentinvalid or unenforceableCopyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  10. 10. Inventorship IssuesJoint Inventors have equal rights to thepatentObtain assignments prior to havingsomeone work on an invention with youTake notes as to who contributed what tothe processPut the patent rights into an LLC or otherentity which controls the rights accordingto a contractual relationshipUse NDA’s (from an attorney) prior todisclosing information to third partiesCopyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  11. 11.  DO NOT make any non-confidential disclosures priorto filing a patent application• 12 month grace period in the US• NO grace period outside the US• Expensive to overcome a prior filed application –even if the “inventor” stole the idea from you DO NOT attempt to commercialize until youdetermine that you will not be infringing a patent DO NOT use a brand name until you know that (1)you will not be infringing a trademark, (2) know youcan protect that brand name, and (3) know you canget the brand name as a domain nameBeginning CommercializationAVOID “ROOKIE” MISTAKESCopyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  12. 12.  Perform your own initial search to see if yourconcept is already commercialized and/orpatented Beware of Invention Submission Scams Identify your market Research market size and competition(KSBDC/ICC) Identify potential channels of distribution Ask yourself “does the potential value of theconcept justify a patent search…or anyinvestment at all?”Beginning CommercializationBEST PRACTICESCopyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  13. 13.  Make all agreements in writing Don’t solicit money from friends and family Seek money from “qualified” investors usingwritten disclosures of investment risk Form a business entity early and know the rulesfor preserving the protection it provides Separate your intellectual property from youroperating company at the very beginning byputting it in a different business entity Have a written operating agreement withpartnersBeginning CommercializationBEST PRACTICESCopyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  14. 14.  Find a patent attorney that fits your needs• Big Firm vs. Boutique Firm vs. Sole Practitioner• How many applications have they worked on?• What is their personal technical background?• Do they have any product developmentexperience?• Do they have any patent litigation experience?• Do they have alternative fee arrangements…flatfee?• What is their hourly billing rate?Finding a Patent AttorneyCopyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  15. 15. Expect Questions… What Problem Does Your Invention Solve? What Is Different Than Other Products AlreadyAvailable? What Materials Have Been Used and Are TheyRequired? Are There Any Critical Ranges or Tolerances ToMake The Invention Work? What Is The “Best” Version Of Your Invention?Why?Copyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  16. 16. Patent “Reform” UpdateSept. 16, 2012• Assignees can now file patents• Limited post-grant reviews (9 month window)• “Gotcha” documents permitted• HUGE increases in fees for post-grant reviewsof patentsMarch 16, 2013• FIRST TO FILE BEGINS• Derivation proceedings (1 year window)Copyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  17. 17. Patent FAQQ. Should I ask a patent attorney to sign anNDA?A. No, it only makes you look silly.Why? You already have attorney-clientprivilege. Laws relating to privilege andfiduciary duty are better suited to deal with theissue than contract law.Copyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  18. 18. Patent FAQQ. Why shouldn’t I put my patent in myoperating company?A. To protect it from lawsuits.Why? If your operating company loses alawsuit or files bankruptcy the patent is an assetof the operating company and will betransferred to another owner. License thepatent to the operating company from an IPholding company for more protection.Copyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  19. 19. Patent FAQQ. My company’s employee handbook says I have toassign any invention I make while employed by themback to the company. Can they do that?A. MaybeExplanation. It depends on the language in thehandbook. There are limitations regardless of whatyour employer tells you. It would generally have torelate to your work or your company’s business.Your company may also have rights if you usedcompany resources.Copyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  20. 20. Patent FAQQ. What happens if my patent attorneycontributes something towards the inventionthat ends up in the patent claims?A. They must be listed as a co-inventor.Why? All inventors have to be named.However, patent attorneys have to assign theirrights back to the inventor.Copyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  21. 21. Patent FAQQ. How much does a utility patent cost?A. It all depends on the subject matter, number ofclaims, size of the inventor/entity, assistance fromthe inventor, billing rate of the attorney, and thesize of the law firm.Why? Complex subject matter is harder toexplain, patent fees are based in part on thenumber of claims and size of the inventor, and bigfirms have more overhead and bureaucracy thansmaller firms.Copyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  22. 22. Patent FAQQ. How long does it take to get a patent?A. It all depends on the patent examiner andnovelty of the invention, but expect 3-5 years.Why? Patent examiners can be very efficient orvery inefficient in examining applications. Notwo patent examiners are the same. Also, themore novel the invention the faster the patentgrant…typically. Design patents tend to befaster than utility patents.Copyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  23. 23.  Court ordered compulsory license…in thepublic interest. A legal infringement. A medical practitioners performance of amedical activity that constitutes aninfringement is “fair use.”• Medical practitioners and health care entitiesare not subject to civil action or the damages,injunctions, or cost shifting provisions of patentlaw…but their suppliers are fair game.What is Fair Use? PatentCopyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  24. 24. Experimental Use Experimental use will not normally be deemedpatent infringement. If experimentation is the "business" of theaccused infringer then the experimental useexception does not apply.What is Fair Use? PatentCopyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  25. 25. A downloadable copy of this presentation will beavailable on www.francis-law.com later today.Open Q&A PeriodCopyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC
  26. 26. THANK YOU!Jim FrancisFrancis Law Office PLLC1025 Dove Run Rd, Suite 201Lexington, KY 40502www.francis-law.comjim@francis-law.com859-523-8302 (Office)Registered US Patent AttorneyRegistered Canadian Trademark AgentFRANCISLAWOFFICEPLLCCopyright 2013 Francis Law Office PLLCFRANCIS LAW OFFICE PLLC

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