Stratus IP Law Group at District I/O on May 30Presentation Transcript
What about IP?Considerations for Startups May 30, 2012
stratuslaw.comPatrick Hansen, Partner Leil Abdi, Partner Viraj Tipnis, Patent AgentElectrical/Software Engineers Big Patent Firm Experience Small Firm Service and Flexibility
Intellectual Propertyo Trademarkso Trade Dresso Copyrightso Proprietary Datao Trade Secretso Patents Photo by Arva Adams CASTING A SHIELD FOR YOUR INNOVATIONSTM
Patentso 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.
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."
Playing Catch UpGoogle has been sued by many, including Oracleover Android for billions. As a young company, it hadfar fewer patents than other tech giants.Google was bidding $4 billion for 6,000 of Nortelswireless patents.Page said Google is buying Motorola Mobility for$12.5 billion, in part, for its patent portfolio.
patents matter to facebookFacebook was sued by Yahoo. Yahoo had 1,000patents. Facebook had 21.Facebook bought 750 patents from IBM. Facebook ispaying $550 million for 650 of the 925 patents Microsoftbought from AOL for $1 billion.Six of the eight patents used in Facebooks countersuitof Yahoo were purchased.
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.
You may have heard..."Yeah, get some patents after about a year in.”
Big Mistake To Wait Too Longo 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.
You may have heard..."Im a VC. Tell me the details of your idea.” "VCs dont sign NDAs.”
Common Mistakes to Avoidoo 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.
Common Mistakes to Avoidoo Relying on a provisional application you filed yourself.
Common Mistakes to Avoido 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.
You may have heard ..."Patents take years to obtain."
Typical Patent Processo 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.
Patent Reform Track 1 Timelineoo 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.
Patent Strategieso Build a patent portfolioo File some Track 1 applicationso Track competitors, consider strategic continuation applicationso File internationally