This is a presentation I gave at Freelancer.com. It is a quick introduction to the principles of patent law and analyses the various components of a patent. Finally, I discus patent strategy in the context of a startup.

1. PATENTS PRIMER
Patenting and IP Strategy for Startups
Dino Talic – 9 Dec 2011
Freelancer.com

2. Disclaimer
This does not constitute legal advice. Just a
quick intro to the basic concepts.

3. Forms of Intellectual Property Term
Copy-
right
Music, Art, etc Life + 70 years
14 years
Industrial Property
Design
Patent 20 years
Trademark 10 years * X
Trade Secret ∞

4. Forms of Intellectual Property Term
Copy-
right
Music, Art, etc Life + 70 years
14 years
Industrial Property
Design
This presentation
Patent 20 years
Trademark 10 years * X
Trade Secret ∞

5. Patent
• Exclusive monopoly in exchange for disclosure of
invention
Disclosure
Time-limited Monopoly

6. Patent Jurisdictions
• A patent is only valid in the jurisdiction in which it is
granted
• World Intellectual Property Organization (WIPO)
• Patent Cooperation Treaty (PCT)
• Provides World filing for Patent Application

7. Criteria for Patentability
• Patentable subject matter
• Some exclusions – e.g. Scientific discoveries, mathematical theories,
etc.
• Useful
• Invention must give rise to a specific, substantial and credible utility
• Novel
• Not already known or previously disclosed
• Non-obvious
• Must be inventive. Non-obvious to a person versed in the art.
• Combination of prior art is not inventive – must be a distinct and non-
obvious advantage

8. What can Typically be Patented
Not valuable
Specific
Product
Invention
Not patentable,
not enforceable
General Concept

9. Valuable Patent
• Enforceable – obvious when a competitor is using
patent and it will succeed in court
• Not easily avoidable – no obvious alternatives

10. Lifecycle of a patent
Publication Search and
Filing of Patent Formal Grant and Opposition
of Substantive
Application Examination Publication Proceedings
Application Examination

11. Lifecycle of a patent
Engineering involvement
Publication Search and
Filing of Patent Formal Grant and Opposition
of Substantive
Application Examination Publication Proceedings
Application Examination
• Prior art search
• Patent Application draft
• Claim drafting (with aid
of IP lawyer!)

12. Lifecycle of a patent
Engineering involvement
Publication Search and
Filing of Patent Formal Grant and Opposition
of Substantive
Application Examination Publication Proceedings
Application Examination
• Response to
Office Actions

13. Lifecycle of a patent
Engineering involvement
Publication Search and
Filing of Patent Formal Grant and Opposition
of Substantive
Application Examination Publication Proceedings
Application Examination
• Expert witness
in litigation

14. Anatomy of a Patent
• Take as example US5579430
• Patent covering the MP3 format for audio compression
• Assigned to the Fraunhofer Institute
• Eventually lead to the development of the open source
Ogg Vorbis file format as an alternative

15. Anatomy of a Patent
Patent #
Title Date
granted
Inventors
Relevant
Assignee Prior Art
(Owner)
Priority
Date Abstract

16. Anatomy of a Patent

17. Anatomy of a Patent

18. Anatomy of a Patent – Detailed Description

19. Anatomy of a Patent - Claims

20. Reasons to file a Patent
• Protect competitive advantage - prevent competitors from
using our inventive technology
• Prevent competitors from patenting similar technology
• Generate licensing revenue

21. Realities for a Startup
• Protect competitive advantage - prevent competitors from
using our inventive technology
• Prevent competitors from patenting similar technology
• Generate licensing revenue
Takes 4 – 6 years to get a patent granted. On average
$3M US to enforce

22. Realities for a Startup
• Protect competitive advantage - prevent competitors from
using our inventive technology
• Prevent competitors from patenting similar technology
• Generate licensing revenue
Patents cost ~$50k each. Disclosure is free.

23. Realities for a Startup
• Protect competitive advantage - prevent competitors from
using our inventive technology
• Prevent competitors from patenting similar technology
• Generate licensing revenue
Very costly and difficult to negotiate, especially for small
companies

24. Reasons a Startup should file a Patent
• Increase leverage over a partner
• Deter a patent lawsuit
• Increase attractiveness for investment or acquisition

25. Why does Freelancer care?
• Our competitors have patents
• We are worth suing
• Raising capital or selling company is difficult without IP
• Deter trolls

26. Patents – joint effort
• Think about what is potentially innovative in your work
• Can we patent something now what we are likely to do in
the future
• Seek help:
• Fleshing out a concept
• Preliminary Prior Art search
• If your idea goes through to filing you will be an inventor!

27. Controversies
• Particularly for software patents
• Non-tangible – should they be patentable:
• US says YES
• EU says NO
• Patent trolls – Intellectual Ventures

28. Further Reading
• Inventing the Future – An Introduction to Patents
http://www.wipo.int/freepublications/en/sme/917/wipo_pub_
917.pdf
• Patent Absurdity: How Software Patents broke
the System
http://patentabsurdity.com/

29. References
• What Do Startups Need to Know about Patent Law
http://www.slideshare.net/JSchox/what-do-startups-need-to-know-about-
patent-law
• Inventing the Future – An Introduction to
Patenhttp://www.wipo.int/freepublications/en/sme/917/wipo_pub_917.pdf