So you have an idea… Adam L.K. Philipp [email_address]

… and it might be worth something Adam L.K. Philipp [email_address]

How can you protect an idea? Trade Secret Unlimited time (in theory) Easy to lose Constant vigilance Patent Limited time Hard to challenge Easy to maintain

Trade Secret

Unlimited time

(in theory)

Easy to lose

Constant vigilance

Patent

Limited time

Hard to challenge

Easy to maintain

Trade Secrets Generally require a binding agreement… … with nondisclosure language (NDA)… … that nobody wants to sign… … and that nobody ever reads.

Generally require a binding agreement…

… with nondisclosure language (NDA)…

… that nobody wants to sign…

… and that nobody ever reads.

Losing a Trade Secret Try Googling “RC4 Source Code”

Try Googling “RC4 Source Code”

Trade Secret Summary Use in limited circumstances Use for manageable periods of time

Use in limited circumstances

Use for manageable periods of time

Patents

What can be Patented “Anything under the sun made by man.” U.S. Supreme Court in Diamond v. Chakrabarty However, the invention must be: New Useful Not obvious

“Anything under the sun made by man.”

U.S. Supreme Court in Diamond v. Chakrabarty

However, the invention must be:

New

Useful

Not obvious

Patents are Exclusive Infringers cannot: Make Use Sell (or offer to sell) Import Last for 20 years from filing date

Infringers cannot:

Make

Use

Sell (or offer to sell)

Import

Last for 20 years from filing date

Base Patent (ABCD) Frisbee

Frisbee

Improved Patent (ABCD+E) Lighted Rotating Flying Body

Lighted Rotating Flying Body

Why Obtain Patents? A. Exclusivity in the marketplace B. Revenue from licensing C. Access to other IP/markets via cross-licensing D. All of the above

A. Exclusivity in the marketplace

B. Revenue from licensing

C. Access to other IP/markets via cross-licensing

D. All of the above

Parts of a Patent Application Written description Drawing(s) Claim(s)

Written description

Drawing(s)

Claim(s)

Provisional Patent Applications No claims needed Not examined “ Option to buy“ a utility application in one year Useful for: Rush filings or when disclosure is imminent When the funds for a full utility application can be better used for something else

No claims needed

Not examined

“ Option to buy“ a utility application in one year

Useful for:

Rush filings or when disclosure is imminent

When the funds for a full utility application can be better used for something else

Patent Coverage Territorial Patents cover only the region/country they are issued in. First to invent in the U.S. Foreign countries: First to file “ Absolute novelty“ International/Regional filing: Less up front costs Potential cost savings with less prosecution in individual countries

Territorial

Patents cover only the region/country they are issued in.

First to invent in the U.S.

Foreign countries:

First to file

“ Absolute novelty“

International/Regional filing:

Less up front costs

Potential cost savings with less prosecution in individual countries

Good Patent Practices Keep Records: Conception date and details Reduction to practice date and details Diligence until filing patent application Preserve U.S. and foreign filing rights by: Early filing of a U.S. application Maintaining work in confidence until U.S. application is filed Binding nondisclosure agreements

Keep Records:

Conception date and details

Reduction to practice date and details

Diligence until filing patent application

Preserve U.S. and foreign filing rights by:

Early filing of a U.S. application

Maintaining work in confidence until U.S. application is filed

Binding nondisclosure agreements

Questions? Adam L.K. Philipp [email_address]