IP Course material provided for Eric Hanscom's Intellectual Property Classes.

1. Presented by:
Eric A. Hanscom
Managing Attorney
2141 Palomar Airport Road, Suite 320 Phone: (760) 651 0142
Carlsbad, CA 92011 Email: info@iciplaw.com
Website: www.iciplaw.com
Patents, Trademarks, Copyrights, IP strategy and portfolio management

2. 35 U.S.C. §102: You have 1 year from the time
you first “publicly disclose” your invention
until you have to file for patent protection.

3.  Job Description: Can handle all legal issues relating to
Intellectual Property (as opposed to “Patent Agents”).
 The Journey to become a Patent Attorney:
 1. Undergraduate Science Degree
 2. Law Degree
 3. California Bar Exam
 4. Patent Bar Exam

4. Patents Trademarks Copyrights Trade Secrets
• A right to exclude • Any name, symbol, • The legal right • A formula, process,
others from figure, letter, word, granted to an author, device, or item of
manufacturing, or mark adopted and composer, information used by
selling, or using your used by a playwright, a business that has
invention for a manufacturer or publisher, or economic value
number of years. merchant in order to distributor to because it is not
designate his or her exclusive publication, generally known or
goods or services and production, sale, or easily discovered by
to distinguish them distribution of a observation or
from those literary, musical, examination and for
manufactured or sold dramatic, or artistic which reasonable
by others. work. efforts to maintain
secrecy have been
made.

5. Type of Average time until Expect to pay
Length of Renew- Practical examples in
Intellectual Protects issue or final (attorney fees +
protection able? business
Property rejection? costs)*
20 years from
Devices, substances,
Patent (Utility) How something works 3 years $7,000 - 50,000 date of filing No
business methods.
application*
Patent 1 year grace period to file a 1 year "grace Devices, substances,
1 year $3,000 - $6,000 No
(Provisional) utility patent application period" business methods.
Patent (US 14 years from Unique shapes of
How something looks 1 year $2,000 No
Design) date of issue products
Patent Up to 25 years
Unique shapes of
(European How something looks 5 months $2,000 - $5,000 from date of No
products
Design) issue
Potentially
Name or logo related to Company names,
Trademark 10 months $1,000 - $5,000 Infinite w/ 10 Yes
business identity brand names, slogans.
year extensions
Websites, owner's
Life of author
Copyright Artistic creations 3 weeks $300 - $1,000 No manuals, packaging,
plus 70 years
advertising materials.
* Certain Exceptions Apply

6. File for a provisional, use the 1 year grace
period to look for investors, do some R&D,
do the prior art search, assess patentability,
make a prototype, get feedback from
prospective buyers and customers.
But, it isn’t all that easy and there are
dangers.

7. Safe Invention Practice
1/1/2009 Disclosure 12/31/2009
Provisional Utility (effective filing date of 1/1/2009)
Disclosure = offer to sell, showing at trade
show, selling some on eBay, showing to
potential investors.

8. 2007 1/1/2009 12/31/2009
Disclosure Provisional Utility (effective filing date of 1/1/2009)
Rather than filing a provision BEFORE
disclosure, Inventor tried to “test the market”
(trade show, sell a few, etc.) and delayed more
than a year in filing for patent protection.
Inventor’s own actions become “prior art”
under 35 USC 102 (one year to file patent
application after disclosure).

9. 12/1/2008 1/1/2009 12/31/2009
Disclosure Provisional Utility (effective filing date of 12/31/2009)
Problem: Inventor tested the market, filed a defective
provisional (DIY’er or online patent filing service),
USPTO determined Utility is NOT supported by
provisional, refuses to allow Utility to take provisional
filing date, so Inventor’s own disclosure is fatal under
35 USC 102.

10. 1/1/2012 2/1/2012 3/1/2012 12/31/2012
Provisional(A) Disclosure Utility(B) Utility(A) (effective
filing date of
12/31/2012)
Problem: Inventor A filed a defective provisional,
disclosed, a competitor (B) filed a valid patent,
then A filed a Utility application AFTER B,USPTO
determined Utility A is NOT supported by
provisional, refuses to allow Utility to take
provisional filing date, so Inventor A loses “race
to USPTO”.

11. • Venture Capitol
Investors • Hedge Funds
• Will want to see solid business plan including
IP strategy.
• Healthcare
• Environment
Government Grant •
•
Antiterrorism
Will want to see solid business plan including
IP strategy.
• Friends
FFF • Family
• Followers
You • Last choice

12.  Examples: Shark Tank, Cal. State U San Marcos
“Quick Pitch Competition”.
 Inventor has 2 minutes to convince a panel of
seasoned businesspeople to invest in his/her
invention.
 Successful “pitchers” include business plan, key team
members, IP strategy (US/foreign), prototype phase,
estimated production cost, where made, estimate
profit by quarters, identify market, offer rate of return
or % of company.

13. • You must invent or discover something new and useful
• Only the following subject matter can be patented:
• Processes (business methods)
Can A Patent • Manufactures (products)
Protect Your Idea?
• Compositions of matter (substances)
(35 U.S.C §101)
• Is there a patent, published paper (including published patent applications), or other public disclosure?
• Did it happen more than 1 year before the filing of the application?
Did Someone Else • This is true even if you had no knowledge of the other public disclosure
Beat You To It?
(35 U.S.C. §102)
• No patent if your invention is an “obvious improvement” over someone else’s public disclosure
• Usually the largest hurdle in obtaining a patent
Is Your Invention • This is true even if you had no knowledge of the other public disclosure
Truly Unique?
(35 U.S.C. §103)

14. Prior Art Search Analyze the Results
• Looks for issued patents, • Should I apply for a utility patent?
published patent applications, • Business decision based upon prior
and products on the marketplace art references found and economic
that are similar to yours. benefit of obtaining (or at least filing
for) a patent
• Prior Art Searches are not
perfect. Everything cannot
be found.
• Use a Prior Art Searching
company that ONLY does prior
art searches; Do NOT use
invention submission companies
who will give you a “package
deal” that includes a prior art
search and a patent application.

15. File Application Allowance Issue
Office
File Application Response Allowance Issue
Action
Office Final Office
File Application Response Abandon
Action Action
Office Final Office
File Application Response Response Allowance Issue
Action Action
Office
File Application Response Allowance Issue
Action
File Continuation Office
Response Allowance Issue
Application Action

16. Issued
File Application Allowance
Patent
Renewal
Response
Fees (Utility
Rejection
/Office (written, Patents
Action phone call, only)
visit USPTO)

17. Background of Detailed
Abstract Drawings Claims
the Invention Description
• Summary of 150 • A simple • This section • This is the
words or Less introduction to describes section that
what your exactly how the protects your
invention is. invention works ideas
Describes the by referring to • It lays out the
general field of the drawings. individual
the invention, Describes in elements of
and sets up why detail why your your idea –
the prior art invention is not basically what
fails to solve the a mere “obvious you “claim” as
problem that improvement” your invention.
your invention over existing
fixes. patented
inventions.

19. A Patent gives you’re the right to
A patent is good only in the country
exclude others from making, using,
where you have the patent.
or selling the invention.
4 Take-Away Items
you should
remember
To infringe a patent, you must To infringe a claim, you must infringe
infringe one claim of the patent. every element of the claim.

20. Your Invention
Patent 1: Narrow Claims Patent 2: Broad Claims
• A Laptop that
includes Claim 1: A Laptop
A Scanner A Scanner
Comprising
• A Scanner
• A Copier
• A Fax Claim 2: A Laptop
A Copier A Copier
Comprising
• A Printer Claim 1: A Laptop
Comprising
Claim 3: A Laptop
A Fax A Fax
Comprising
Claim 4: A Laptop
A Printer A Printer
Comprising
The Competition
Throckmorton V. Cox, III: 12-year old
Francoise’s Computer Center: In the
Hing Wong: A Hong Kong company computer genius living in New York
U.S., he builds a laptop computer
importing into the U.S. a laptop who has customized his laptop to
that contains a fax. He does not sell
computer with a photocopier and a contain a scanner, fax, printer, and
it in the U.S., but rather exports all of
scanner built into it. cell phone. He made it himself, and
the laptops to France.
has never sold it to anyone.

21. He is a Chilean
businessman
who makes
laptops in
China.
What
about
Felipe
Santiago?
He ships the These laptops
laptops contain a fax,
directly from scanner,
China to printer, and
Germany. photocopier.

22. Presented by:
Eric A. Hanscom
Managing Attorney
2141 Palomar Airport Road, Suite 320 Phone: (760) 651 0142
Carlsbad, CA 92011 Email: info@iciplaw.com
Website: www.iciplaw.com
Patents, Trademarks, Copyrights, IP strategy and portfolio management

23. Trademarks
(Products)
Trademarks
(45 Classes)
Servicemarks
(Services)

24. Business Name, Logo Preliminary
Considerations
Slogan, Logo Is my name unique enough to
get a trademark? (The more
fanciful the better. Nike, Xerox
v. San Diego Legal Services.
Colorful logos, tag lines,
Product Name slogans are all good.
Should I pay for a trademark
Color, Sound, Shape search?

25. File Allowance Publication Opposition
Application
Office
Response
Trademark First renewal fees
Action Issues are due between
years 5 and 6
Subsequent
renewal fess are
due every 10 years

26. Foreign Patents must be filed:
• 40 – 50% of •Directly in the foreign country
USA world’s market •Buy yourself time with a Patent
for many goods Cooperation Treaty (PCT) filing
Key Countries
Other • Europe, Japan,
Buyers Australia, Canada
Foreign Trademarks can be
filed:
• China / Hong •Directly in the foreign country
Manufactur- Kong, Taiwan, •En masse through the Madrid Protocol
ing Sites South Korea,
Vietnam, Thailand
Defensive
Patents / • China
Trademarks Key Factors:
•Number of People in the Country
•Average Income per Person
•Geographic and/or Cultural Factors: Will
they buy your product?
Shipping • Hong Kong, •Enforcement of Intellectual Property:
Ports Will that country enforce your IP?
Singapore

27. What should • Websites (before and after putting on-
line)
inventors • Brochures and other Advertising
Materials
consider • Packaging
copyrighting? • Owner’s Manuals
• Loser usually has to pay some attorney’s
fees and court costs
Copyright • Statutory Damages of up to $150,000 per
infringement for knowing and willful
Lawsuits infringement.

28. Presented by:
Eric A. Hanscom
Managing Attorney
2141 Palomar Airport Road, Suite 320 Phone: (760) 651 0142
Carlsbad, CA 92011 Email: info@iciplaw.com
Website: www.iciplaw.com
Patents, Trademarks, Copyrights, IP strategy and portfolio management

29.  Investors and Prospective Buyers of
your invention already know a lot
about inventors; you need to know
the same things about inventors
(yourself) if you want to have a
chance to succeed.

30. Winners Losers

31. Is it a business or a hobby? Business are created to make
money, hobbies are for fun. If your invention is just a hobby,
sure, try to do it yourself, but don’t expect to succeed.
Mistakes made with IP applications are often not “discovered” until
years after filing, and you may lose potential patent and trademark
rights during this time.
You can’t bluff forever: A solid IP strategy is essential for attracting
investors. Seasoned investors will look carefully at your patent, trademark
and copyright applications before they invest in your invention, so why not
do it right the first time?
As the inventor, what is a good use of your time? Successful inventors focus on
what they do best and hire professionals for the rest.

32. “There are two types of inventors: the paranoid, and the more paranoid”
• Ron Reardon, President, National Association of Patent Practitioners (NAPP), NAPP
Conference, 2009.
Common Concern: “The
Chinese will steal my idea so I
won’t use them for prototypes
Never tell your idea to anyone “There are 3 things every
or production”
and die happily, but without successful inventor needs to
Fact: There is a security
having made any money off do: 1) trust some people, 2)
concern in overseas
your idea, because you kept take some chances, and 3)
manufacturing, but I have seen
your secret. spend some money”
much more “copying of
successful products” than
“stealing of ideas”.

33. 
Derek Sivers
 It’s so funny when I hear people being so protective of ideas. (People who want me to sign an NDA to tell me
the simplest idea.)
 To me, ideas are worth nothing unless executed. They are just a multiplier. Execution is worth millions.
 Explanation:
 AWFUL IDEA = -1 NO EXECUTION = $1
WEAK IDEA = 1 WEAK EXECUTION = $1000
SO-SO IDEA = 5 SO-SO- EXECUTION = $10,000
GOOD IDEA = 10 GOOD EXECUTION = $100,000
GREAT IDEA = 15 GREAT EXECUTION = $1,000,000
BRILLIANT IDEA = 20 BRILLIANT EXECUTION = $10,000,000
 To make a business, you need to multiply the two.
 The most brilliant idea, with no execution, is worth $20. (My laptop idea was probably worth $10)
 The most brilliant idea takes great execution to be worth $20,000,000.
 That’s why I don’t want to hear people’s ideas. I’m not interested until I see their execution.
 (So, think twice before becoming an Arrogant Inventor who thinks a mere idea is worth millions)

34. Lawyers who say they have investor-clients and would consider
introducing you to the investors (but imply that you have to hire
them for business first). (Beware of “alphabet lawyers”)
Invention Promotion Companies
“International” Trademark companies, Trademark “monitoring services”
Beware the “free ticket” to discuss your patent (it is probably one way)

35. Presented by:
Eric A. Hanscom
Managing Attorney
2141 Palomar Airport Road, Suite 320 Phone: (760) 651 0142
Carlsbad, CA 92011 Email: info@iciplaw.com
Website: www.iciplaw.com
Patents, Trademarks, Copyrights, IP strategy and portfolio management

36. Making / Selling it Yourself:
Find Your Target Audience
• Find a Factory, avoid front door
and back door theft issues.
• Warning to those who don’t like “selling”: you will have to
“sell” your invention to someone • Transportation to Dock
• If no one will buy it, probably won’t make money • Shipping
• Warehouse in Long Beach
Do Research • Customs
• Distribution
• Internet/Sourcing sites • Sales
• Trade Shows • Charge-backs
• Visit Local Stores • Advertising
Create a Prototype? Theoretically not • Allowances
necessary to file a patent application, but • Defective Policies
practically, YES, you should have one. • Accounting
• U.S. • Unforeseen Circumstances
• Asia

37. License Assignment (Selling Your IP)
• License is a “rental” of your • Assignment is a sale
IP • “You give me $500,000, I’ll
• “You have the rights to make give you the patent.”
and sell products covered by • Less common than licensing
this patent in California for because the assignee is less
one year. I get $25,000 up likely to pay a decent price
front, and you pay me 3% of with an unproven invention,
gross sales per year. and once you have “proven”
• Considerations: the sales ability of the
• Exclusive or Non-exclusive invention, you probably don’t
• Territory want to sell it anyway.
• Royalties
• Accounting Period
• Audit Rights
• Ending, Renewal, and
Termination of the License

38. Prior Art Search -> Is it worth filing for a Utility Patent?
Yes -> Get “patent pending” (Utility or Provisional), then
try to sell or license.
No -> Will patent laws change? Worth a Hail Mary
application to get patent pending status for a few years?
In any case -> Would a Design Patent be useful?
In any case -> Trademarks and Copyrights.

39. Design, Manufacture, Deliver TM
Prototyping your Ideas
An overview of the first steps for commercializing your product idea
Leardon Solutions
PO Box 28564
San Diego, CA 92198-0564
www.leardon.com

40. Design Specialty Expected Time* Expected Cost*
Prototype Use for Prototype Detail Fabricator
Required Required
Design Fabrication Design Fabrication
Proof-of- “It works” 1-2 1-5
No No N/A $200-$2000
Concept months weeks
Integrated “This is how I’ll 1-3 3-5 $1000-
Probably Probably $1500-$3000
Design mass produce it” months weeks $2000
“This is what it $3000-$15000
Production looks like off the Yes Yes
2-3
months
2-3
months
$2000-
$3000
(includes
production
assembly line” tools)
* Assumption is a 4 piece metal or plastic mechanical prototype. Certain exceptions apply .

41. How do you make a Prototype?
 Stereolithography (SLA)
 A laser is used to cure liquid material and generate a part
 Parts are great for verifying form and fit but not usually function
 Takes about 3 days from release
 Cost ranges from $300 to $1000 for medium parts

42. How do you make a Prototype?
 Machining
 It is possible to machine most plastics and metals
 Turnaround times are around 1-3 weeks
 Produces parts that can be used to test form, fit, and function
 Part cost ranges from $150 for small parts and $6000 for large parts
Machined Parts Before Glueing Final Prototype
Assembly

43. How do you make a Prototype?
 Silicone Molding
 Take a machined plastic part and create a silicone mold for producing 15 parts
 Costs more than a tooled part but lead-time is much faster
 A set of 15 small parts will cost around $1500-$2500

44. Presented by:
Eric A. Hanscom
Managing Attorney
2141 Palomar Airport Road, Suite 320 Phone: (760) 651 0142
Carlsbad, CA 92011 Email: info@iciplaw.com
Website: www.iciplaw.com
Patents, Trademarks, Copyrights, IP strategy and portfolio management

45. Ryan A. Alexeev, Esq.
2141 Palomar Airport Rd., Ste. 320
Carlsbad, CA 92011
Tel: (619) 819-5085 / Fax: (619) 353-3401
www.NorthCountyLegal.com

46. Business Plan
Entity Formation
FBN

47. •Start Selling or •Purpose
Providing Your •Strengths
Services •Weaknesses
•Target Market
•Write Your Plan •Competitors
Down •Investment
•Obtain Trademarks
or Patents

48. •Sole Proprietorship
•Partnership
•Corporation
•LLC

49. Sole Proprietorship
• Can just start doing business – You and the business are one
• No need to file anything with the State
• Pay taxes under your own social security number
• You are personally liable
Partnership
• Two or more people going into business with each other
• No need to file anything with the state if you are operating as a general partnership
• Each person pays taxes on their own
• Each person is liable for the debts and you may be liable for your partner’s actions
General partners – manage the business and are equally liable for its debts
Limited partners – may invest but not be directly involved in management and are liable only
to the extent of their investments.
Limited Liability Partnership – Usually used by attorneys or accounting firms. Limits the
partner’s liability to the amount he/she invested in the company.

50. Corporations
• Business is separate entity from the owners
• Requires Articles of Incorporation to be filed with the Secretary of State
• Should have your by-laws which state how meetings should be held, when
they should be held
• Minimum franchise tax fee of $800 must be paid each year
• Must have an annual meeting and send in statement to the Secretary of State
every year stating you are in compliance
• The business is liable and not the individuals – Of course there are
exceptions to these rules
Limited Liability Corporation
• Owners and managers have limited liability
• For tax purposes
• 1 owner is taxed as sole proprietorship
• More than 1 owner is taxed as partnership
• May be owned by individuals or business entities
• Formation is simpler and faster than forming and maintaining a corporation
• Formal oral or written operating agreement must be entered into
• Minimum tax of $800/year
• Articles of Organization must be filed with Secretary of State

51.  File with County of San Diego
 San Diego El Cajon Kearney Mesa San Marcos
Chula Vista
 Do not use the publication services sent you
immediately