Lead to Win
and OTTAWA PATENT AGENCY INCORPORATED present…
d NCORPORATED t
Patents for Starting and Growing a Business
An Introduction to Patents for Inventors and Entrepreneurs
presented by:
Peter Kwa, P.Eng., Dipl.‐Ing., United States and Canadian Patent Agent , ‘the patent guy’

Agenda
• What is a Patent ?
What is a Patent ?
• Who is an Inventor ?
• What can be patented ?
Wh t b t t d?
• Cost vs Benefit ‐ Patent For Starting a Business
• Patent Portfolio for Growing a Business
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• Summary
© Ottawa Patent Agency Incorporated 2

What is a Patent ?
What is a Patent ?
• protects your patented invention from being copied by your
competitor
• protects your competitor’s patented invention from being
copied by you
– two sides of the patent coin
• exclusive rights for make, use, and sell
– NO positive right to practice the patented invention
NO positive right to practice the patented invention
• patent protection on a per country basis
• why is there a patent system at all?
– quid pro quo bargain between patentee and public
quid pro quo bargain between patentee and public
– give up trade secrets in exchange for monopoly rights
– accelerates development of public know‐how
© Ottawa Patent Agency Incorporated 3

Who is an Inventor ?
Who is an Inventor ?
• Inventor
– Conception of problem and sol tion
Conception of problem and solution
– Reduction to practice
• Actual RTP = build prototype and make it work
• Constructive RTP = file a patent application
• NOT an inventor
– Verification engineer without more, however…
– Manager suggesting problem to be solved, however…
• Make sure entrepreneur/company owns patent rights
M k t / t t i ht
– Inventor has inchoate rights
– Clause in employment agreement/consultant contract: employee/consultant assigns or has
obligation to assign IP/patent rights (+ non‐competition clause)
– Establish confidentiality program, need to know
Establish confidentiality program, need to know
– Prospective funders/buyers, exposure to industrial espionage
You can easily lose your patent rights File Early
© Ottawa Patent Agency Incorporated 4

What Can Be Patented ?
(examples of patentable subject matter)
• US: anything under the sun made by man…
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– Software, … other countries less liberal
• Improvement patent
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• New Use of Old Things/Processes
•
•
You CAN Invent‐On‐Demand
http://www.ottawapatentagency.com/images/disclosure.pdf
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patent to start patent portfolio to grow
© Ottawa Patent Agency Incorporated 5

What Can Be Patented ?
(general considerations for invention disclosure)
• Quid pro Quo bargain between inventor and public
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– Quid (useful teachings that the inventors give to the public)
• Written description, drawings: inventor must show possession of invention
• Enablement inventor must teach how to make, use invention
• Teach ‘best mode’ as preferred embodiment(s) of the invention
– Quo (monopoly for the invention that the public gives to the inventor)
Quo (monopoly for the invention that the public gives to the inventor)
• Claims: defines scope of monopoly [let patent agent do this part]
• Prior art
– Search for closest prior art(s)
• http://ep.espacenet.com/ worldwide patent database
p // p p / p
• http://patft.uspto.gov/ US
• http://patents.ic.gc.ca/cipo/cpd/en/introduction.html Canada
• http://www.wipo.int/pctdb/en/index.jsp PCT
• http://www.wipo.int/patentscope/en/search/national_databases.html links to other national patent
databases
– Differentiate invention from closest prior art
– Difference must be inventive such that invention as a whole is non‐obvious to PHOSITA
Invention must be patentable
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over the closest prior art
© Ottawa Patent Agency Incorporated 6

What Can Be Patented?
(sample invention disclosure to patent agent)
• Title of Invention, name of inventor(s)
, ()
• Written description: structure, function of the invention
– Drawings, flowcharts, block diagrams, etc. are often necessary to
adequately describe the invention
• Enablement: make, use of the invention
bl k f h i i
• Teach ‘best mode’ as preferred embodiment(s) of the invention
• Describe (expected) most valuable commercial embodiment(s) of
the invention to be protected by the patent
th i ti t b t t d b th t t
• Closest prior art(s)
– if known, provide a copy or a reference, a web link, etc
– if not known let patent agent conduct a search
if not known, let patent agent conduct a search
• What is believed to be the inventive step?
– Describe how invention differs from closest prior art(s) in terms of ‘point
g g
of invention’, ‘the lightbulb’, ‘flash of enlightment’, …
© Ottawa Patent Agency Incorporated 7

What can be patented ?
(sample filing options for filing patent applications)
• US
– Provisional to get a filing date
– Non‐provisional within 1 year
• Canada
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– Convention filing within 1 year of the US provisional
• PCT (International Patent Application)
PCT (International Patent Application)
– Convention filing within 1 year of the US provisional
– Enter target countries within 30 months of US provisional
• Time to evaluate market in target countries
• Delay or avoid expenses
Delay or avoid expenses
– May be more economical than individual filings for 4 or more target countries
Start Here to Jumpstart Your Patent
http://www.ottawapatentagency.com/jumpstart.htm
© Ottawa Patent Agency Incorporated 8

Important Gating Issues
Important Gating Issues
• What is a Patent ?
• Who is an Inventor ?
Who is an Inventor ?
• What can be patented ?
Do you have a patentable invention ?
Do you have the patent rights ?
Will your invention sell ?
Will your invention sell ?
• Cost‐Benefit Analysis – Patents For Starting a Business
• Patent Portfolio for Growing a Business
• Summary
© Ottawa Patent Agency Incorporated 9

Cost‐Benefit Analysis of Patent / Patent Portfolio
…Benefits
B fit
• protects market niche; sell aspect of patent protection
protects market niche; sell aspect of patent protection
• protects knowhow for providing product or service; make, use
aspects of patent protection
• patents as bargaining chips
patents as bargaining chips
– stronger competitive position
– stronger negotiating position
• generate revenues from royalties
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– patent portfolio as profit centre
– financial recycling of patents for fuelling R&D
• protects investments in R&D
– patents as insurance for future exploitation, time to market ‘bloom’
• defensive publication
– prevents ‘blocking patent’ from competitor
© Ottawa Patent Agency Incorporated 10

Cost‐Benefit Analysis of Patent / Patent Portfolio
…Costs
C
• Cost of Procuring Patents
Cost o ocu g ate ts
– Approach as part of a funded R&D project
• Allocation for patent protection
• Cost of Managing Patent Portfolio
– Approach as a budgeted item in business plan
– Support business growth through patenting
improvements or parallel product lines
• Litigating patents can be very expensive costs
Litigating patents can be very expensive, costs
can vary very widely, can lead to spectacular
settlements
© Ottawa Patent Agency Incorporated 11

Sample Result of Cost‐Benefit Analysis of Patent Portfolio
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Ordered List of Benefits to Support YOUR Business Objectives
1. Defensive means
• Prevent competitor from using patented key component that
p gp y p
enables a lucrative product
2. Offensive means
• Block roadmap of competitor with a blocking patent
3. Increase equity valuation for increased VC funding
What is the result of YOUR cost‐benefit analysis?
© Ottawa Patent Agency Incorporated 12

Patent Portfolio Management Part 1
Patent Portfolio Management – Part 1
New Invention disclosure
has won us an
Award of Excellence
Patent Review Committee
P R i C i
Recommendations to Part 2
Prioritization by CTO
Prioritization by CTO
Patent Review Committee
reviews patent portfolio
i t t tf li
against business objectives
“Your In‐House Patent Department”
© Ottawa Patent Agency Incorporated 13

Patent Portfolio Management Part 2
Patent Portfolio Management – Part 2
from Part 1
Searching and Drafting
S hi d D fti
Filing the Patent Application
You can now mark your product with ‘Patent Pending’ !
Patent Prosecution
P t tP ti
Patent Grant
You can now mark your product with ‘Patented’ !
© Ottawa Patent Agency Incorporated 14

Patent Portfolio Management – Part 3
Sample Timeline for Procuring a Patent
months
‐1 0 12 18 30 36 40
© Ottawa Patent Agency Incorporated 15

Summary
• Establish Value of Patent / Patent Portfolio
for Company / Inventor
– Approach procurement of a patent as a funded project
– Approach patent portfolio as a budgeted item of a business plan
• Establish Patent Review Committee for Managing Patent
Portfolio
– “Your In‐House Patent Department”
Your In‐House Patent Department
– Put CTO in the driver’s seat
Thank You!
Thank You!
More information is available at http://www.ottawapatentagency.com
or Jumpstart Your Patent http://www.ottawapatentagency.com/jumpstart.htm
© Ottawa Patent Agency Incorporated 16

presents…
How to Draft an Invention Disclosure
for Your Patent Agent
Peter Kwa, P.Eng., Dipl.‐Ing., United States and Canadian Patent Agent
President of Ottawa Patent Agency Incorporated, the patent guy
President of Ottawa Patent Agency Incorporated ‘the patent guy’

SAMPLE INVENTION DISCLOSURE
• Title of invention: Rain Dance Robot
• Inventor: Bushman Monk (you)
1 • Draw your robot with lead lines and reference numerals
Draw your robot with lead lines and reference numerals,
use spaced apart numerals such as odd numbers 1, 3, 5 … so
that you can add reference numerals for hands, feet …
11
without renumbering
• Write down the children’s song Dem Bones: bone 1
9
connects to bone 3 connects to bone 5 … leads to structure
to achieve the various functions (written description)
• Write down how you let your robot dance the rain dance
Write down how you let your robot dance the rain dance
for a rich patent harvest (enablement)
• Make sure you describe your best robot for the richest
3 patent harvest (best mode)
• Describe your (expected) best selling robot for protection
b ( d) b ll b f
5 by the patent
7 • Closest prior art: Walking Robot by Robert Walk
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• Inventive step: dance style for making rain (describe and
illustrate)
© Ottawa Patent Agency Incorporated 2

The Ideal ‘Table of Content’
of invention disclosure to patent agent
• Title of Invention, name of inventor(s)
Title of Invention, name of inventor(s)
• Written description: structure and function of the invention
– Drawings, flowcharts, block diagrams, etc. are often necessary to adequately
describe the invention
• Enablement: teach how to make, use the invention as well as the inventor
E bl t t hh t k th i ti ll th i t
himself could (best mode), teach best mode as preferred embodiment(s)
of the invention
• ( p ) ()
Describe the (expected) most valuable commercial embodiment(s) of the
invention for protection by the patent
• Closest prior art(s)
– if known, provide a copy, a reference, a web link, etc
– if not known let patent agent conduct a search
if not known, let patent agent conduct a search
• What is believed to be the inventive step?
– Describe how invention differs from closest prior art(s) in terms of ‘point of
invention’, ‘the lightbulb’, ‘flash of enlightenment’, …
© Ottawa Patent Agency Incorporated 3

Prior Art and Inventive Step
Prior Art and Inventive Step
• Search for closest prior art(s)
– http://ep.espacenet.com/ worldwide patent database
– http://patft.uspto.gov/ US
– http://patents.ic.gc.ca/cipo/cpd/en/introduction.html Canada
– http://www.wipo.int/pctdb/en/index.jsp PCT
– http://www.wipo.int/patentscope/en/search/national_databases.html links to
other national patent databases
• Anything can be prior art: publications in trade journals, products
in the marketplace, …
in the marketplace
• Differentiate invention from closest prior art(s)
• Difference must be inventive such that invention as a whole is
non‐obvious to PHOSITA, a person having ordinary skill in the art
, p g y
Invention has to be patentable
over the closest prior art(s)
over the closest prior art(s)
© Ottawa Patent Agency Incorporated 4

Transmitting the Invention Disclosure
to Patent Agent
• email: attach invention disclosure in MS Word WordPerfect
email: attach invention disclosure in MS Word, WordPerfect,
… (any common file formats)
• Fax:
– faxed drawings are often of inadequate quality, may have to be redone
by draftsman
– email drawings.pdf or similar file if you have scanning ability, or mail
g p y g y,
drawings separately by postal mail
• Postal mail
– always possible for just about anything
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all of our contact options are posted at
http://www.ottawapatentagency.com/contact.htm
htt // tt t t / t t ht
© Ottawa Patent Agency Incorporated 5

Problems Drafting the Invention Disclosure?
Problems Drafting the Invention Disclosure?
• VERY common problem, general guidance is available
– http://www.ottawapatentagency.com/images/inventor.pdf
– http://www.ottawapatentagency.com/images/cto.pdf
• Send us a rough draft and drawings as well as you can muster
Send us a rough draft and drawings as well as you can muster
• Call us at +1‐613‐592‐0637
– after we have had an opportunity to look at the rough draft and
drawings
– we will draw out the necessary information from the inventor(s)
• We don’t charge for initial consultations
We don t charge for initial consultations
– We are passionate about inventions and patents, and have genuine
fun talking about them even when we sometimes don’t earn money
for the time spent
for the time spent
© Ottawa Patent Agency Incorporated 6