2. stratuslaw.com
Patrick Hansen, Partner Leil Abdi, Partner Viraj Tipnis, Patent Agent
Electrical/Software Engineers
Big Patent Firm Experience
Small Firm Service and Flexibility
3. Intellectual Property
o Trademarks
o Trade Dress
o Copyrights
o Proprietary Data
o Trade Secrets
o Patents Photo by Arva Adams
CASTING A SHIELD FOR YOUR INNOVATIONSTM
4. Patents
o In return for disclosure to public, patent gives
statutory right to exclude others from
making, using or selling invention for a limited
time.
o Patent application is a written description with
drawings, including claims defining the legal
scope of the invention.
o If application is granted by USPTO, patent can
be licensed or sold. It can also be challenged.
5. You may have heard...
"Software patents are useless. There are too many patents that
cover trivial things."
"Software patents are dangerous."
"I am a coder, a hacker. I do not believe in patents."
"The patent system is broken."
6. Playing Catch Up
Google has been sued by many, including Oracle
over Android for billions. As a young company, it had
far fewer patents than other tech giants.
Google was bidding $4 billion for 6,000 of Nortel's
wireless patents.
Page said Google is buying Motorola Mobility for
$12.5 billion, in part, for its patent portfolio.
7. patents matter to facebook
Facebook was sued by Yahoo. Yahoo had 1,000
patents. Facebook had 21.
Facebook bought 750 patents from IBM. Facebook is
paying $550 million for 650 of the 925 patents Microsoft
bought from AOL for $1 billion.
Six of the eight patents used in Facebook's countersuit
of Yahoo were purchased.
8. Do Patents Apply To My Business?
o Consult with a patent attorney who can provide
expert analysis. There may or may not be
patentable concepts.
o Must be a category of invention that can be
patented, and it must be novel over existing
public information.
o General considerations of patentability.
9. You may have heard...
"Yeah, get some patents after about a year in.”
10. Big Mistake To Wait Too Long
o Lose priority date to competitors. First-to-invent
system. First-to-file system on March 16, 2013.
o You can lose the right to file a patent if you wait
more than a year after public disclosure, on
sale, use or otherwise made available to the
public.
o Need to protect yourselves as you talk with
investors and build a team.
11. You may have heard...
"I'm a VC. Tell me the details of your idea.”
"VCs don't sign NDAs.”
12. Common Mistakes to Avoid
o
o Fully disclosing inventive ideas to the public or
untrusted VCs before filing a patent application.
o Not having a solid NDA signed by third party
developers, employees, investors or
collaborators.
13. Common Mistakes to Avoid
o
o Relying on a provisional application you filed
yourself.
14. Common Mistakes to Avoid
o Not maintaining a clean chain of title.
Who owns the IP?
• Inventorship is a legal determination of who
conceived the claimed invention.
• Inventors assign the patent application to your legal
entity.
• Get agreements to assign from employees and third
party developers.
15. You may have heard ...
"Patents take years to obtain."
16. Typical Patent Process
o 2-3 years before receive first Office Action from the
USPTO after filing a non-provisional application.
o Have 3-6 months to respond - maybe amend claims.
May interview patent examiner. Will receive a Final
Office Action or Notice of Allowance several months
later.
o If multiple rounds, could be years before application
issued or abandoned. Patent examiner rejections can
be appealed to the Patent Trial and Appeal Board and
to the Federal Circuit Court of Appeals.
17. Patent Reform Track 1 Timeline
o
o Pay a fee to the USPTO to prioritize your patent
application.
o Patent application can reach a final disposition
or issue as a patent within one year.
18. Patent Strategies
o Build a patent portfolio
o File some Track 1 applications
o Track competitors, consider strategic
continuation applications
o File internationally
