These slides introduces the general idea of the patent law using a couple of examples.

1. Patent/IP
for
Entrepreneur
HSUANYEH
CHANG,
PHD,
ESQ.
PATENT
ATTORNEY
&
ATTORNEY
AT
LAW
HSUANYEH
LAW
GROUP,
PC
1
©
2016
Hsuanyeh
Law
Group
PC

2. “Business
Is
War,
Patent
Is
Sword”
2
I
am
the
best
seller!
We
protect
the
best
seller!
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2016
Hsuanyeh
Law
Group
PC

3. Overview
of
Intellectual
Property
Rights
(1/2)
Copyright (©)
◦ Protects
original
works
of
authorship
fixed
in
tangible
medium
of
expression
Trademark (TM,
SM,
®)
◦ Protects
marks
that
identify
and
distinguish
source
of
goods/services
Trade
Secret
◦ Protects
secret
information
that
derives
economic
values
from
being
misappropriated
3
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2016
Hsuanyeh
Law
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PC

4. Overview
of
Intellectual
Property
Rights
(2/2)
Patent
– new and
useful product
and
process
4
Android,
allegedly
infringingiPhone
©
2016
Hsuanyeh
Law
Group
PC
Invalidated,
Feb.
26,
2016

5. Outline
What
is
a
Patent?
Why
entrepreneur
needs
a
Patent?
What
can
entrepreneur
do
with
a
Patent?
How
to
get
a
Patent?
Some
Examples
5
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2016
Hsuanyeh
Law
Group
PC

6. What
is
a
Patent?
Patent
is
Disclosure
◦ Quid
Pro
Quo
(“this
for
that”)
– In
return
to
applicant’s
disclosure
of
the
invented
new technology,
the
government
grants
applicant
an
exclusive
right
for
a
certain
time
period
to
prevent
others
from
making
and
using
the
same
invention
Patent
is
Personal
Property
◦ Inventorship (Conception/Creation)
– Patent
rights
are
granted
to
the
inventors
who
first
file
(after
AIA)
an
application
◦ Ownership (Possession)
– Ownership
of
a
patent
is
determined
by
contract.
An
inventor
is
presumed
the
owner
but
not
necessarily
true
in
all
cases.
Most
employment
contracts
require
employees
to
transfer
patent
ownership
to
their
employer
Patent
is
Right
to
Exclude
◦ Patent
claims set
forth
the
patent
scope
(“metes
and
bounds”)
6
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2016
Hsuanyeh
Law
Group
PC

7. Types
of
Patent
Utility
Patent
(20
years
from
filing)
◦ New
and
useful
process,
machine,
manufacture,
or
composition
of
matter
Design
Patent
(15
years
from
issuance)
◦ New,
original,
and
ornamental
design
for
an
article
of
manufacture
Plant
Patent
(20
years
from
filing)
◦ Asexually reproduced
new
variety
of
plant
7
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2016
Hsuanyeh
Law
Group
PC

8. Why
entrepreneur
needs
a
Patent?
Protect
ideas
– ideas
worth
nothing
until
some
legal
protections
are
obtained
Attract
venture
capital
investment
– although
getting
a
patent
does
not
guarantee
venture
investments,
the
inability
to
get
one
shows
likelihood
of
failure
Increase
company
value – startups
with
patents
are
normally
valued
20-­‐50%
higher
than
without
a
patent
8
©
2016
Hsuanyeh
Law
Group
PC

9. What
can
entrepreneur
do
with
a
Patent?
Legal
barrier
– Patents
create
a
high
barrier
to
prevent
competitors
from
entering
into
the
market
Licensing – Startups
can
earn
income
by
entering
into
a
patent
licensing
agreement
with
partners
(e.g.,
B2B
customers,
OEM
providers,
etc.).
Business
loan
– Sometimes,
startups
can
use
patents
as
collateral
to
secure
a
business
loan
9
©
2016
Hsuanyeh
Law
Group
PC

10. How
to
get
a
Patent?
File
an
application
in
the
Patent
Office
If
the
application
is
not
granted
outright,
amend
the
application
and/or
argue
with
the
Patent
Office
for
patentability
Conditions
of
Patentability
◦ Utility
(Sec.
101)
– new
and
useful,
not an
abstract
idea
◦ Novelty
(Sec.
102)
– not
anticipated
by
prior
art
◦ Nonobviousness (Sec.
103)
– not
obvious
to
one
of
ordinary
skill
in
the
art
at
the
time
of
invention/filing
10
©
2016
Hsuanyeh
Law
Group
PC

11. Patent
Application
Process
11
Allow?
Provisional
Non-­‐Provisional
(12
months)
Publication
(18
months)
Patent!
J
Rejection
Amendment
and
Response/RCE
Appeal
Foreign/PCT
Appl.
(12
months)
PCT
National
Stages
(30
months)
Yes
No
Abandon
L
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2016
Hsuanyeh
Law
Group
PC

12. Example
1:
Bladeless
Fan
12
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13. Example
1:
Prior
Art
13
ò Originally
filed
Claim
1.
A
bladeless
fan
assembly
for
creating
an
air
current,
the
fan
assembly
comprising:
ò a
nozzle
and
a
device
creating
an
air
flow
through
the
nozzle,
the
nozzle comprising:
ò an
interior
passage,
ò a
mouth
for
receiving
the
air
flow
from
the
interior
passage,
and
ò a
Coanda surface
located
adjacent
the
mouth
and
over
which
the
mouth
is
arranged
to
direct
the
air
flow.
Prior
Art
–1981,
Toshiba
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2016
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Group
PC

14. Example
1:
Patented Claim
US
Patent
No.
8,308,445
(Issued
November
13,
2012)
Patented
Claim
1.
A
bladeless
fan
assembly
for
creating
an
air
current,
the
fan
assembly
comprising:
◦ a
nozzle,
and
a
device
creating
an
air
flow
through
the
nozzle,
the
nozzle
comprising
◦ an
interior
passage,
formed
between
a
first
wall
and
a
second
wall,
wherein
a
distal
end
of
the
first
wall
overlaps
a
distal
end
of
the
second
wall
to
form,
near
the
distal
ends
of
the
first
and
second
walls,
◦ a
mouth
for
receiving
the
air
flow
from
the
interior
passage,
◦ a
tapered
region,
located
downstream
from
the
mouth,
and
◦ an
outlet,
located
downstream
of
the
tapered
region,
for
releasing
the
air
flow
from
the
nozzle,
wherein
a
distance
between
the
first
wall
and
the
second
wall
is
greater
at
the
mouth
than
at
the
outlet,
and
◦ a
Coanda surface
located
adjacent
the
outlet,
wherein
the
first
wall
is
curved
proximate
to
its
distal
end
to
direct
the
air
flow
over
the
Coanda surface,
and
wherein
a
thickness
of
the
first
wall
decreases
near
the
distal
end,
and
a
thickness
of
the
second
wall
increases
near
the
distal
end.
Substantially
narrowed
in
scope
by
adding
the
textual
language
in
red.
14
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2016
Hsuanyeh
Law
Group
PC

15. Example
2:
Thumb
Drive
15
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PC

16. Example
2:
Prior
Art
Exemplary
Claim
1.
A
portable
memory
device,
comprising:
◦ a
USB
connector;
◦ a
flash
memory
module
for
storing
data;
and
◦ a
USB
controller
coupled
between
the
USB
connector
and
the
flash
memory
module.
16
Prior
Art
-­‐ 1
Prior
Art
-­‐ 2
©
2016
Hsuanyeh
Law
Group
PC

17. Example
2:
Patented Claim
USP
6,148,354
(Issued
November
14,
2000)
Claim
1.
A
USB
flash
memory
device
for
connecting
to
a
USB-­‐defined
bus,
the
flash
memory
device
comprising:
◦ (a)
at
least
one
flash
memory
module
for
storing
data;
◦ (b)
a
USB
connector
for
connecting
to
the
USB-­‐defined
bus
and
for
sending
packets
on,
and
for
receiving
packets
from,
the
USB-­‐defined
bus;
◦ (c)
a
USB
controller
for
controlling
said
at
least
one
flash
memory
module
and
for
controlling
said
USB
connector according
to
at
least
one
packet
received
from
the
USB-­‐defined
bus,
such
that
data
is
written
to
and
read
from
said
at
least
one
flash
memory
module;
◦ (d)
an
electrical
interface
for
connecting
to
said
USB
connector
and
for
receiving
said
packets
from
said
USB
connector
as
a
plurality
of
electrical
signals;
◦ (e)
a
logical
interface
for
connecting
to
said
electrical
interface
and
for
translating
said
plurality
of
electrical
signals
to
logic
signals,
said
logic
signals
being
passed
to
said
at
least
one
flash
memory
module;
◦ (f)
a
functional
interface
for
receiving
said
logic
signals
such
that
if
said
logic
signals
represent
a
USB
functional
packet,
said
functional
interface
sends
a
USB
command
to
said
USB
controller
according
to
said
USB
functional
packet;
◦ (g)
an
application
packet
extractor
for
connecting
to
said
logical
interface
and
for
receiving
said
logic
signals,
said
application
packet
extractor
extracting
at
least
one
packet
from
said
logic
signals;
and
◦ (h)
an
application
command
interpreter
for
receiving
said
at
least
one
packet
and
for
determining
a
command
according
to
said
at
least
one
packet,
said
command
being
passed
to
said
USB
controller.
Substantially
narrowed
in
scope
by
adding
the
textual
language
in
red.
17
©
2016
Hsuanyeh
Law
Group
PC

18. Contact
Information
Hsuanyeh
Chang,
PhD,
Esq.
張宣業博士律師
Patent
Attorney
&
Attorney-­‐at-­‐law
hsuanyeh@hsuanyeh.com
(617)
599-­‐8282
(direct)
www.hsuanyeh.com
18
©
2016
Hsuanyeh
Law
Group
PC