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IP Strategies for Startups

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Overview of Intellectual Property Law: Patents, Trademarks, Tradesecrets. Copyright.

Overview of Intellectual Property Law: Patents, Trademarks, Tradesecrets. Copyright.

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  • Provide Examples of NDAGo through One way and UT NDA
  • Experimental Use Defense.Maintain control of the invention at all times.
  • Hand out list of PCT countries.
  • Australia -$1091 per inventionKorea -- $609 per invention (good in electrical and mechanical)(can search Japanese patents)US -- $2080 per invention (best for biotech)EPO -- $2164 per inventionSupplemental search may run upto $2300
  • Scissor Example
  • Scissor Example
  • For example, if an inventor knows that a liquid should be heated to 250 degrees for optimal performance, but discloses in the patent that the liquid should be heated to "above 200 degrees", then the inventor has not disclosed his "best mode" for carrying out the invention. The best mode must be disclosed for the entire invention, and not only its innovative aspects.[
  • Transcript

    • 1. IP Strategies for startups
      AGRAWAL LAW FIRM, LLC
      8333 OLIVE BOULEVARD
      ST. LOUIS, MISSOURI 63132
      314-994-7604
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 2. AGRAWAL LAW FIRM
      WHAT IS INTELLECTUAL PROPERTY?
      TRADEMARKS
      COPYRIGHTS
      TRADE-SECRETS
      PATENTS
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 3. AGRAWAL LAW FIRMOVERVIEW - TRADEMARK
      A TRADEMARK IS ANY WORD, NAME, SYMBOL USED BY MANUFACTURERS OR MERCHANTS TO IDENTIFY THEIR GOODS OR SERVICES IN ORDER TO DISTINGUISHTHEM FROM OTHERS.
      TRADEMARKS CAN ALSO BE SLOGANS, SHAPES AND COLORS.
      EVEN FRAGRANCES MAY QUALIFY FOR TRADEMARK PROTECTION.
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 4. AGRAWAL LAW FIRMOVERVIEW - COPYRIGHT
      COPYRIGHT IS THE EXCLUSIVE RIGHT TO COPY A WORK. IT IS NOT LIMITED TO THE IDEA ITSELF BUT THE EXPRESSION OF THE IDEA.
      DOES NOT PROTECT THE IDEA, PROCEDURE, PROCESS, METHOD OR CONCEPT.
      PROTECTS THE IDEA THAT IS EXPRESSED.
      A COPYRIGHT EXISTS THE MOMENT IT IS CREATED, WHICH IS WHEN THE WORK IS FIXED FOR THE FIRST TIME IN A TANGIBLE MEDIUM OF EXPRESSION
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 5. THE AGRAWAL LAW FIRMOVERVIEW- TRADE SECRET
      A trade secret may consist of any formula, pattern, physical device, idea, process or compilation of information that:
      provides a competitive advantage in the marketplace, and
      is kept secret to prevent the public or competitors from learning about it, absent improper acquisition or theft.
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 6. AGRAWAL LAW FIRMOVERVIEW - PATENTS
      A patent is a Negative Right.
      The owner of an issued Patent can prevent Others from:
      Making
      Using
      Selling
      Licensing
      technology described and claimed in the patent
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 7. THE AGRAWAL LAW FIRM
      PATENTS
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 8. AGRAWAL LAW FIRMPATENTS
      A patent is a Negative Right.
      The owner of an issued Patent can prevent Others from:
      Making
      Using
      Selling
      Licensing
      The technology described and claimed in the patent
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 9. AGRAWAL LAW FIRM PATENTS
      WHAT CAN YOU PROTECT WITH A PATENT?
      INVENTIONS
      NEW TECHNOLOGY
      ORNAMENTAL DESIGNS
      ASEXUALLY REPRODUCED PLANTS
      WHEN SHOULD YOU FILE A PATENT APPLICATION?
      AS SOON AS POSSIBLE BECAUSE OF PRIOR ART
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 10. AGRAWAL LAW FIRMPATENTS
      What are the Requirements of a Patent
      The invention has to be New, Useful and Unobvious
      New
      novel, not disclosed to anyone
      No publications to be eligible for a global patent
      Useful
      Perform a useful task.
      Most all inventions are useful; have to watch for business method patents make sure tied to computer
      Unobvious
      No other patent or invention performs the same function in exactly the same way
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 11. AGRAWAL LAW FIRMPATENTS
      Parts of a Patent
      Specification
      Background that describes a problem to be solved
      Description of the invention and how it solves the problem
      Includes any drawings
      Claims
      Describe your invention
      Provide legal support for your invention
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 12. © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 13. AGRAWAL LAW FIRMPATENTS
      What is necessary to file a Patent?
      A prior art Search is Required
      What is prior art?
      all information that has been made available to the public in any form before the date a provisional patent or utility patent is filed, which may be relevant to a patent's claims of novelty.
      If an invention has been described in prior art, a patent on that invention is not valid.
      Do a Google search, patent search, literature search
      Draft a provisional or Utility Patent application
      File Provisional patent with a single claim OR
      File a Utility patent with a set of claims
      File and pay the governmental fees
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 14. AGRAWAL LAW FIRMPaTENT SEARCH
      PATENT SEARCHING
      Use multiple databases to search for prior art
      What is PRIOR ART?
      All information that is made available publically before the patent application’s priority date that is relevant to the claimed invention
      Databases
      Google Patents www.google.com/patents
      EPO Database http://ep.espacenet.com
      USPTO www.uspto.gov
      India http://www.patentoffice.nic.in/
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 15. AGRAWAL LAW FIRMPATENTS - INVENTORSHIP
      WHY IS INVENTORSHIP IMPORTANT?
      All inventors named on a patent own the patent equally
      Any inventor can license the patent to a third-party without a co-inventor’s permission
      Improper inventorship can invalidate a patent
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 16. AGRAWAL LAW FIRMPATENTS - INVENTORSHIP
      Patent Inventorship vs. Author of Peer Journal Paper
      Not the same
      Inventorship on a patent is based on conception
      Inventorship requires that at least ONE claim in the patent be attributed to an inventor
      Inventors do not need to physically work together
      They do not need to make Equal contributions
      So they do not need to contribute to each claim
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 17. AGRAWAL LAW FIRMPATENTS - INVENTORSHIP
      KEY TO INVENTORSHIP IS CONCEPTION
      Conception is when the idea of the invention, including every feature is known AND
      When someone with ordinary skill could construct the apparatus, perform the process without undue experimentation
      Proof is provided by using laboratory notebooks
      INVENTORSHIP IS NOT
      One suggests an idea
      One follows instructions
      One consults on the project after conception
      One acts as salesman showing how product may be used
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 18. AGRAWAL LAW FIRMPATENTS
      CAN I FILE A PATENT APPLICATION AT ANY TIME? NO
      YOU MUST FILE BEFORE A DISCLOSURE IS MADE.
      IN US YOU HAVE A ONE YEAR GRACE PERIOD TO FILE A PATENT APPLICATION
      FILE A PROVISIONAL PATENT TO BUY TIME
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 19. AGRAWAL LAW FIRMNDA
      If you disclose your invention before filing a patent application you can lose your right to have a patent
      Most Countries require absolute novelty
      Can’t disclose
      Can’t sell product
      Can’t offer for sale
      Can’t advertize
      SOLUTION IS THE NON-DISCLOSURE AGREEMENT
      TYPES OF NDAs
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 20. AGRAWAL LAW FIRMPATENTS – ON SALE BAR
      Most countries require absolute novelty
      Precludes selling or offering a product for sale prior to filing a patent application
      US has an exception
      Can file a patent WITHIN ONE YEAR AFTER First sale of the invention
      After ONE year the patent application is barred.
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 21. AGRAWAL LAW FIRMPATENTS - PROVISIONAL
      Does INDIA have PROVISIONAL PATENT?
      India does not have provisional patents per se
      But you can refile within ONE YEAR
      ADVANTAGES:
      Provides Early Priority Date, used in foreign filing
      Place “Patent Pending” on product
      Allows time for additional research & to test the market
      Low cost
      Allows for public disclosure AFTER filing
      Useful for filing before Professors give presentations on research
      Improvements may be added to subsequent Utility Patent
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 22. AGRAWAL LAW FIRMPATENTS - PROVISIONAL
      DISADVANTAGES
      Improvements later added to utility patent may not receive same priority filing date
      Cannot update Provisional
      MUST convert into a UTLITY patent application within ONE year or lose benefit of priority date
      MUST also file PCT within one year
      Otherwise is abandoned
      Lose one year of potential examination by patent office
      May not sufficiently describe the invention
      Must include point of novelty
      Must include ONE claim for EU priority purposes
      May invalidate your patent
      © Agrawal Law Firm, 2010. All Rights Reserved.
    • 23. AGRAWAL LAW FIRMPATENTS - PROVISIONAL
      STRATEGIC USES
      The US is a first to invent country
      Has date of invention
      “Effective filing date” -- when the patent application was filed in the US
      File US provisional application when file Indian Patent Application
      This Creates an invention date in the US under §102(b)
      Your Patent application is then prior art for US inventors
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 24. AGRAWAL LAW FIRM
      Month 0
      Month 12
      Month 18
      Provisional Filing
      Utility Filing
      Patent Publication
      PCT Filing
      File patents in countries
      Patent Issues
      Upto 31 month
      Upto 5 years from when filed
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 25. AGRAWAL LAW FIRMPATENTS - PCT
      What is a PCT?
      PCT stands for Patent Cooperation Treaty
      Treaty signed by 142 countries
      A method to filing international patents
      Has very strict timelines
      FACTS
      50% of all foreign cases filed are through PCT
      PCT buys you time
      Get an international Search and Written Opinion and optionally International Examination
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 26. AGRAWAL LAW FIRMPATENTS - PCT
      ADVANTAGES
      File a single patent application instead of series of national patent applications
      Provides acceptance of priority date
      Less expensive
      Allows time delay to file patent applications in foreign countries
      Can delay costs upto 30 months
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 27. AGRAWAL LAW FIRMPATENTS - PCT
      DISADVANTAGES
      Does not provide patent protection
      Does not Issue an international patent
      IT IS A FILING SYSTEM
      STRATEGY
      You must file the PCT in India
      Select the US or the EPO as the searching authority
      You won’t have to pay the search fee again
      Supplementary Search – expensive, use for commercially viable applications. Ask is it worth the expense.
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 28. AGRAWAL LAW FIRMPATENTS - Claims
      NUTS & BOLTS
      A Patent only provides protection based on what is stated in the claims
      You want broad claims - Why?
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 29. AGRAWAL LAW FIRMPATENTS - Claims
      Broad Claims lead to more protection
      Protection around your house. The farther the fence is away from the house, the more area it protects.
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 30. AGRAWAL LAW FIRMPATENTS - Claims
      CLAIM 1:
      An apparatus, comprising: a first blade having a first sharpened edge and a handle with a hole to fit the thumb, a second blade having a second sharpened edge and a handle with a hole to fit a finger, wherein the handles are used to opearate the first sharpended edge and the second sharpeneded edge in opposite directions pivot manner to cut a plurality of materials such as paper, cardboard, metal foil, plastic, cloth, rope, and wire.
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 31. AGRAWAL LAW FIRMPATENTS - Claims
      CLAIM 2: An apparatus comprising: a plurality of metal blades, each having at least one sharpened edge, wherein the sharpened edges operate to slide against one another to cut a material.
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 32. AGRAWAL LAW FIRMPATENTS - Claims
      METHOD vs. APPARATUS CLAIMS
      HINT – Keep the two types of claims separate
      E.g., A method for measuring the heart rate, comprising:
      E.g., An apparatus for measuring the heart rate, comprising:
      NOT A method and apparatus for measuring the heart rate, comprising:
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 33. AGRAWAL LAW FIRMPATENTS – BEST MODE
      BEST MODE is not required in most countries
      It is not required in EU or India
      REQUIRED IN USA. Requires the inventor disclose make a full disclosure and provide the “best” embodiment for the invention.
      If not provided can invalidate a US patent.
      Must show(1) the inventor possessed a best mode at the time of filing; and (2) the written description fails to disclose the best mode in a way to allow one reasonably skilled in the art to practice that mode.
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.
    • 34. AGRAWAL LAW FIRMPATENTS – BEST MODE
      Best Mode must be disclosed at time of filing patent application
      Does not have to be updated
      Do not have to provide manufacturing or production specifications
      One does not have to specify in the patent that this is the best mode
      Defects in Best Mode can be corrected by filing an amendment to the specification (New Matter)
      © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.

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