Become Patent-smart Entrepreneur


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Presentation on practical knowledge on patents for startup enthusiasts from Pune OpenCoffee Club (POCC) meet on Sept 19, 2009.

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Become Patent-smart Entrepreneur

  1. 1. Become Patent-Smart Entrepreneur! Hemant Chaskar Inventor, US Patent Office Agent, and Director at Leading Tech Startup
  2. 2. Note, Not A Disclaimer This presentation is not designed for IP law practitioners or students Rather it offers practical knowledge on patents for business professionals
  3. 3. IP Alphabet Soup Patents Trademarks Inventions Distinguishing marks They Are All Independent Entities! Copyrights Trade Secrets Tangible expressions Company secrets
  4. 4. Patent Right “Right to exclude” others from - Making - Using - Selling - Offering for sale - Importing the patented invention.
  5. 5. Jurisdiction US Patent valid only in US etc. There is nothing called “International Patent” • PCT and Paris Convention are procedures to facilitate patent filing in different countries Each country processes (examines) separately May get patent in India, but not in US etc.
  6. 6. Obtaining Patent (Prosecution) File invention description Patent Pending with patent office Time ~ 3-4 Yrs - Sets the date of invention Cost ~ upto Right $10K vests Patent office assesses it (for US patent) from over prior art filing Arguments/counter-arguments date … Patent may be granted Patented Validity: 20 Yrs
  7. 7. What Is Patentable In principle: Process, Machine, Article, Composition, Plant. Interpretations differ in different countries. Abstract concepts, (laws of) nature are out of scope everywhere. Less Tangible Inventions “Bilski” Case: (Business processes, data Currently waiting for analysis technique etc.) USA word from U.S. Processes More Tangible implemented Supreme Court, Inventions (Machines, by software about clarification of devices, substances, “tangibility” in U.S. chemical processes, engineered plants etc.) Others (with different country-specific scopes)
  8. 8. What Is Patentable Useful in practice Implementable Result need not be perfect Working prototype need not be ready Combination can be patentable even if individual components are well known Does not have to be ground breaking discovery But needs to be novel and non-obvious over prior art Should be able to convince patent examiner!
  9. 9. Practical Use of Patents Assertion/Licensing Likelihood Credible Defense Negotiating lever Projecting good image Self-satisfaction
  10. 10. Hard Realities of Assertion/Licensing Having patent does not mean you can wield it Your patent can be invalidated Your opponent can counter-sue Settlements (licensing) are hard to come through Court remedy may be too rough to handle From time, money, intensity and uncertainty perspective You (small fish) may have to sign up “patent troll”
  11. 11. Countering Opponent’s Patents Try to design around Look for prior art (or other issues) which can invalidate the patent Maintain your patent or other instrument as counter Assess if the opponent can really go for court remedy License if nothing of these work
  12. 12. How to Read Patent Understand claims, claims are the only thing which define scope of patent There are independent claims and dependent claims which depend from independent claim, e.g., Claim 23: “A process comprising steps A, B and C.” Claim 24: “The process of claim 23 further comprising step D.” All processes which perform A, B, C and possibly more steps Claim 23 scope All processes which perform A, B, C, D and possibly more Claim 24 scope steps
  13. 13. What Causes Infringement E.g., Claim 23: A, B, C Infringement Process with steps A, B, C, X, Y, Z on Claim 23 E.g., Claim 23: A, B, C No Infringement Process with steps A, B, _, X, Y, Z on Claim 23 Infringement on any one claim of patent causes infringement on patent
  14. 14. Infringement vs Patentability Example of distinction between the two: “Candy with plastic wrapper” Patent X Claims • Product infringing on X “bare candy” • Invention patentable over X (assuming no other prior art) Also note: Infringement is on “claims of patent” in the “same jurisdiction” Patentability is to be analyzed with respect to “all prior knowledge” available “worldwide”
  15. 15. When You Have an Idea Do prior art search to find out if idea is patentable File as early as possible, dates are very important If you need more time to decide, at least file provisional application to get official date stamp Do not disclose your idea to others until you at least file a provisional application US has one year grace period to file from public disclosure, but many others (e.g., Europe) do not allow any public disclosure before filing If you decide not to go for patent, make sure you have strategy to prevent others from patenting Find trustworthy counsel
  16. 16. Thank You.