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1. An Introduction to Patents and
Trademarks for Startups
June 2023 Myers Wolin, LLC - Confidential 1
June 27, 2023
Daniel Gross

2. Intellectual Property Is …
• Traditionally defined as:
– Trademarks
– Patents
– Copyrights
– Trade Secrets
– Right of Publicity
• You should view as a
business asset to be
leveraged and
monetized
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3. Top Questions
• Trademark and/or patent?
• Trade Secret?
• When should I start investing?
• How can I defer spend?
• Do I need to file something before . . .
– Starting a Kickstarter campaign?
– Sending plans to a factory?
– Coordinating with a partner?
– Presenting my thesis?
– Speaking at SXSW?
June 2023 Myers Wolin, LLC - Confidential 3

4. Patents
• Utility Patents
– The way something works
• The claim defines the rights
• The rest of the patent supports the claims
• Design Patents
– The way something looks
• The figures define the rights
• “The ornamental design for … as shown and
described”
• Concerned with exact copies of industrial design?
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5. Patents
• Why should you file for a patent?
– Monetize your intellectual capital
• Create an asset
• License to a company
• Start a company
• Market yourselves (or your product) to investors
– Protect against imitators
• Review your portfolio against product launches
• File before any disclosure to preserve worldwide rights
• Systematically build a wall of protection covering variations
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6. Patents
• Why shouldn’t you file for a patent?
– Invention isn’t ready
• Starting too early may accelerate your timeline unnecessarily
• You can’t yet identify the invention
– Not patentable subject matter or not new
• Your real value add is your team or your business model
• Focus on marketing and business model
• Revisit value of patent once you know your product
– Should you maintain as a trade secret?
• Can your competitors reverse engineer?
• Is it patentable?
• Is it the same subject matter as your potential patent?
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7. Utility Patents
– Things that are patentable
• Process
• Machine
• Article of manufacture
• Composition of matter, or
• Any new and useful improvement thereof
– Things that are not patentable
• Laws of nature
• Natural phenomena
• Abstract ideas
– Software is tough!
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8. Utility Patents
• If patentable subject matter, what else does an
inventor need to show?
– Novel – previously known?
– Useful – produce a tangible result?
– Non-obvious to a Person Having Ordinary Skill in the Art
(PHOSITA)
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9. Utility Patents
• What is in the application?
– Claims:
• Defines the invention being protected
– But what is your invention?
• Can describe in a number of ways
– Apparatus
– Method
– System
• Include claims with varying scope
– Broad
– Narrow/Targeted
» Your product
» Your competitor’s product
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10. Utility Patents
• What is your invention?
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11. Utility Patents
• Method and means for creating anti-gravity illusion
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12. Utility Patents
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13. Utility Patents
• One of several related patents in the Apple v.
Samsung litigation
• Slide to unlock feature.
• “Unlocking a Device by Performing Gestures on an
Unlock Image”
• Claims can be difficult to interpret
– Generally, litigation requires a separate hearing for claim
interpretation
– “Markman hearing”
June 2023 Myers Wolin, LLC - Confidential 13

14. • How do you get a patent?
– Invent something!
• . . . and figure out what the invention is!
– Market research
– Search?
– Develop a strategy
– Draft and file a patent application
• Start with a provisional? How formal?
• Follow up with non-provisional and/or PCT
– Prosecute the application
• United States?
• Internationally?
June 2023 Myers Wolin, LLC - Confidential 14
Utility Patents

15. Utility Patents
• Figure out what your invention is
– Not always obvious!
• Is it a widget or a method of making a widget?
• Is it a single feature?
– What is the end result?
• What value does your invention add?
– How do you get to that end result?
– How do you stop others from getting there?
– Where is the commercial value?
• What aspect are you marketing?
June 2023 Myers Wolin, LLC - Confidential 15

16. Why Search
• Many reasons to search:
– Determining whether to pursue patent protection
• Likely to get a patent?
• What is the likely claim scope – worth filing?
– Worth investing in development
• If you can’t secure protection, would you redirect resources?
– Appropriate level of detail and claim scope
• Will strengthen resulting patent
• Make sure your filing includes information you may ultimately need in
the claims
– Where to direct future research
• Find gaps in the prior art suitable for development
• Will you walk into a “patent thicket”?
June 2023 Myers Wolin, LLC - Confidential 16

17. Start with Provisional?
• Placeholder - preserves your rights to a filing
date for 12 months
• Not examined, but content still matters
• Allows you to use the term “Patent Pending”
– Helpful in seeking investment
• Simplified filing
• Lower cost
• Can file multiple provisional applications on
same invention
June 2023 Myers Wolin, LLC - Confidential 17

18. Provisional Application
• Risks:
– Any non-provisional application claiming the benefit must
be adequately supported:
• Enablement
• Written description
• Best mode
• Drawings
– If your claims are unsupported, you lose the early date.
• False sense of security
– You will lose your priority if you don’t file a non-provisional
application within a year
– Avoid “red flags”
• Some language may inadvertently limit your future scope of
protection.
June 2023 Myers Wolin, LLC - Confidential 18

19. Provisional Application
• Best practice:
– Provisional application should be as complete and
similar to a non-provisional application as possible,
other than formalities
– Describe the invention so that one of ordinary skill
can make and use the invention
– Disclose the best mode you know of for claimed
elements – including your current and planned
implementation
June 2023 Myers Wolin, LLC - Confidential 19

20. Provisional Application
• Best practice:
– Draft a variety of sample claims
• Broad enough to prevent design arounds
• Narrow enough to avoid prior art
• Varied claim types, as appropriate
– Think about your invention in a few different ways
– Assign to the company
• Get an assignment from all inventors
• Joint ownership is almost always bad
– Obligation to assign for all of your employees and
consultants!
• Your contracts with designers and engineers should all
include a standard clause
June 2023 Myers Wolin, LLC - Confidential 20

21. Provisional Applications
• Decisions are driven by budget.
– Lowest cost option – file disclosure prepared by company
• Brief review for “red flags” if possible
• File your slide deck!
• File your engineering drawings!
• Last resort – plan on revisiting when budget/timeline allows.
– Ideal option – attorney review of disclosure and
preparation of formal application, ready to use as a non-
provisional application other than formalities.
– Intermediate options – prepare claim set and
corresponding description, combine with company
disclosure.
June 2023 Myers Wolin, LLC - Confidential 21

22. Utility Patents
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23. Patent Examination
• Prosecution – Application is reviewed substantively
by an Examiner for:
– 35 USC §101 – Statutory Subject Matter
– 35 USC §112 – Adequate disclosure
• Enablement, written description, and best mode
• Definiteness
– 35 USC §102 – Anticipation
– 35 USC §103 – Obviousness
June 2023 Myers Wolin, LLC - Confidential 23

24. Patent Examination
• Prosecution – Application is reviewed substantively
by an Examiner for:
– 35 USC §102 – Anticipation
• Does it already exist?
– 35 USC §103 – Obviousness
• Would it be obvious to a PHOSITA based on what already exists?
– These reviews are based on prior art references
• Hopefully, you found these references in your search
– If any deficiencies, you will receive an “Office Action”
indicating the examiner’s conclusions
• Almost 90% of patent applications receive at least one
• You will have an opportunity to amend your claims and respond to
any rejections
• Call the examiner
June 2023 Myers Wolin, LLC - Confidential 24

25. After Examination?
• Patent application is granted
– Pay fees, receive patent
• Must maintain your application
– 3, 7, and 11 years
• File continuation on related inventions?
– Broaden claim
– Target competition
– Benefits to keeping an application alive
June 2023 Myers Wolin, LLC - Confidential 25

26. Design Patents
• Easier to get, but narrower protection
– Easy to file
– Potentially easy to design around
• Is your ornamental design valuable?
– Your software interface?
– Some animation?
– Industrial design?
– Your web design?
• Are you concerned with exact copies?
– Do you trust your factory?
June 2023 Myers Wolin, LLC - Confidential 26

27. Design Patents
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28. Design Patents
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29. Design Patents
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30. Monetizing you IP
• You have your IP. Now what?
– Build your company!
– License, royalties from licensing patent rights
– Consulting fees, payments related to “know-how”
• Patents demonstrate expertise
– Cross-license for product development and commercialization
– Sell (assign)
• Will you be practicing? Need leaseback.
– Allow to expire or donate
• Valuable for marketing?
– Collateralize/Securitize
– Patent exchanges/pools
June 2023 Myers Wolin, LLC - Confidential 30

31. Monetizing you IP
• Deriving value through spinning off new
companies that focus on building out the
market infrastructure for products and services
based on the IP.
• Reaching out to global partners and
enterprises to offer licensing opportunities in
specific fields of use that leverage the IP.
June 2023 Myers Wolin, LLC - Confidential 31

32. Licensing you IP
• A lot more to consider if licensing than if assigning!
• Will you be practicing yourself or licensing to multiple
parties?
– Limit the license
• Exclusivity
• Territory
• Field of use
• Channels of distribution. Sell through resellers?
– Dealers/distributors/retailers
– Direct to consumers
– Allow to sublicense?
June 2023 Myers Wolin, LLC - Confidential 32

33. Licensing you IP
• Term of license
• Scope of license
• Royalty amount
– What is reasonable in your industry?
– Clarify definitions
– Upfront/annual license fee
• Especially if exclusive!
• Require licensee to:
– Spend on marketing
– Satisfy minimum sales
• If not satisfied, does the license terminate? Become non-exclusive?
– Launch by a specified date
– Get your approval for exemplary products
June 2023 Myers Wolin, LLC - Confidential 33

34. Licensing you IP
• Confidentiality
• Reporting/auditing
• Who deals with patent infringement?
• Who owns new IP?
• Indemnification – how broad?
• How do you handle disputes?
June 2023 Myers Wolin, LLC - Confidential 34

35. University Startup
Case Study
• A researcher creates some technology IP for her university
and wants to form a startup to commercialize this IP.
• University provides an exclusive license where the
university takes a percentage equity stake in the startup as
well as royalties.
• For example, university has a standard deal for university
spin-offs: 6% equity at the first major financing ($2M+) and
a royalty rate of 2% of licensed revenue.
• University may offer a standard buyout package for a
startup that chooses to leave the university ecosystem.
June 2023 Myers Wolin, LLC - Confidential 35

36. Tech Transfer
• Things to think about
– How much equity to give up for your IP?
– Can you avoid early payments?
– How much/when to repay prosecution
costs?
– Royalty rate in line with industry?
– Exclusivity
– Can you buy out?
June 2023 Myers Wolin, LLC - Confidential 36

37. Tech Transfer
• Things to think about
– Can you get an option first?
• Get some time to talk to investors
– Control ongoing prosecution
• IP directed to commercial products may be different
than research IP
– Sublicensing rights
– Can you develop new IP without University
ownership?
– Do I need the original IP? For how long?
June 2023 Myers Wolin, LLC - Confidential 37

38. Trademarks
• Purpose?
– Identifies the source of goods or services
• Assures quality control and other characteristics
• Symbolizes goodwill in a product
– Prevent consumer confusion
• Required to be:
– Distinct and non-descriptive
– In use in interstate commerce
• Term
– Unlimited, assuming continued association by the public
June 2023 Myers Wolin, LLC - Confidential 38

39. Trademarks
• Different flavors
– Trade Dress
• Design of product or packaging
– Distinctive and non-functional
– Certification Mark
• A mark that certifies approval of a product by a third party
– Collective Mark
• Identify members of a group
– Geographic Marks
• Identifies a location as a source of goods
June 2023 Myers Wolin, LLC - Confidential 39

40. Types of Trademarks
• Sound
– Three chimes for NBC
– Five tones for Intel
– McDonalds
– THX
• Aroma
• Motion
• Moving Images
June 2023 Myers Wolin, LLC - Confidential 40

41. Trademark Examples
June 2023 Myers Wolin, LLC - Confidential 41
Trade Dress
Color
Word Mark
Logo Design

42.  Purpose is consumer protection
 You stop getting protection if people stop thinking of you as the
source
 Examples of genericide:
 Raisin Bran
 Dry Ice
 Yo-Yo
 Aspirin
 Thermos
 Escalator
 Your trademark is an asset – invest in it!
 Loss of distinctiveness is a loss of an asset
Genericide
June 2023 Myers Wolin, LLC - Confidential 42

43. Intellectual Property Is …
• Trademark
– Build and maintain
consumer goodwill
– Protect consumers
– Allow consumers to
identify your
products
– Distinct and non-
descriptive
• Patent
– Protect/monopolize
your innovation
– Can I do what I
want to do?
– Can I stop others
from copying me?
– New, useful, and
non-obvious
June 2023 Myers Wolin, LLC - Confidential 43

44. Top Questions
• Trademark and/or patent?
• Trade Secret?
• When should I start investing?
• How can I defer spend?
• Do I need to file something before . . .
– Starting a Kickstarter campaign?
– Sending plans to a factory?
– Coordinating with a partner?
– Presenting my thesis?
– Speaking at SXSW?
June 2023 Myers Wolin, LLC - Confidential 44

45. June 2023 Myers Wolin, LLC - Confidential 45
MYERS WOLIN, LLC
New Jersey Location
100 South Jefferson Road
Suite 202
Whippany, NJ 07981
New York City Location
225 Broadway
Suite 2400
New York, NY 10007
Phone: +1-973-828-1284
daniel.gross@myerswolin.com
www.myerswolin.com

46. Disclaimer
• Information, content, and images are
being used for educational and
informational purposes only. Consult
with appropriate legal counsel about
the specific application of the law in
your business.
June 2023 Myers Wolin, LLC - Confidential 46