What Do Startups Need to Know about Patent Law

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Jeffrey Schox is a Registered Patent Attorney and the founding member of Schox Patent Group, a boutique patent firm devoted to building patent portfolios for cleantech, medtech, and high-tech startups. Drawing on his experience of over fourteen years in patent law and seven years in angel investing, he has written patent applications for startups that attracted investments from high profile venture capital firms, including Accel, Andreessen Horowitz, Bessemer, Founders Fund, Greylock, Kleiner Perkins, and Sequoia. As a Consulting Professor, Jeffrey teaches patent law in both the engineering school and the law school at Stanford University. Jeffrey also sits on the Advisory Board for the Center for Entrepreneurship at the University of Michigan.

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What Do Startups Need to Know about Patent Law

  1. WHAT DO STARTUPS NEED TOKNOW ABOUT PATENT LAW? JEFFREY SCHOX, ESQ. SCHOX PATENT GROUP LINKEDIN.COM/IN/JSCHOX TWITTER.COM/JSCHOX
  2. Who am I? Professor Angel Investor Patent Attorney Entrepreneur
  3. Patents suck.• Trolls will sue us• Brad Feld is going to change patent law• We don’t want to play the patent game
  4. Patents suck.• Trolls will sue us *• Brad Feld is going to change patent law• We don’t want to play the patent game *The only factor is whether you infringe (and have money)
  5. Patents suck.• Trolls will sue us.• Brad Feld is going to change patent law *• We don’t want to play the patent game *He cannot. And neither the Supreme Court, Congress, or the PTO will.
  6. Patents suck.• Trolls will sue us.• Brad Feld is going to change patent law• We don’t want to play the patent game * *You don’t have a choice.
  7. Why do startups file patents?• enforce against a competitor• prevent the patenting by someone else• generate licensing revenue
  8. Why do startups file patents?• enforce against a competitor *• prevent the patenting by someone else• generate licensing revenue *Takes 3-5 years to get a patent, and costs $3-5M to enforce.
  9. Why do startups file patents?• enforce against a competitor• prevent the patenting by someone else *• generate licensing revenue *Patents cost about $40K each. Publication of your invention is free.
  10. Why do startups file patents?• enforce against a competitor• prevent the patenting by someone else• generate licensing revenue * *It takes a huge effort
  11. Why do startups file patents?★ stimulate investment or acquisition★ deter patent infringement lawsuit★ increase leverage over a partner
  12. When should startups file patents?• pursuing both U.S. and foreign patents? you must file before public disclosure• pursing only U.S. patents? you can file within one year after public disclosure** in March 2013, the U.S. is moving to a “first-to-file system”
  13. What is patentable? Software Method of using Method of making Hardware
  14. What is patentable? Not Specific ValuableGeneral Not Patentable
  15. What is patentable? Invention
  16. Misunderstanding Patent LawThe relationship between:(a) the patentability of an invention, and(b) the infringement of another patent.
  17. Who can make a frosted light bulb?Pat. No. 223, 898 Pat. No. 1,687,510Edison Electric-lamp Pipkin Frosted bulbs
  18. Misunderstanding Patent LawPioneering Improvementinvention invention
  19. Misunderstanding Patent LawPioneering Improvementinvention invention
  20. Who can make a frosted light bulb?Answer: Neither Edison nor Pipkin.
  21. Misunderstanding Patent Law★An invention may be patentable if it can bedistinguished from previous inventions.★A product may infringe an existing patent if itcontains all of the elements of a claim.These issues are independent of each other.
  22. What do investors want to hear?★You have determined what is patentable (andhave taken steps to protect your rights).★You have determined whether you infringeany patent rights of your main competitors.Again, these issues are independent!
  23. How to choose a patent attorney? Legal Business Tech
  24. Thanks JEFFREY SCHOX, ESQ. SCHOX PATENT GROUPLINKEDIN.COM/IN/JSCHOX TWITTER.COM/JSCHOX

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