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Traklight Webinar with Shane Olafson and Kyle Siegal on Patent Dos and Don'ts for Startups

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Patent Do’s and Don’ts 
for Startups 
Moderated by: 
Mary Juetten 
Traklight, Founder & CEO 
Presented by: 
Shane Olafson ...

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PATENT DO’S AND DON’TS 
FOR STARTUPS 
Presented by: 
Shane E. Olafson, Esq. and Kyle N. Siegal, Esq. 
Lewis Roca Rothgerbe...

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What IS a Patent? 
• A patent is a federal grant of exclusive rights for a 
limited time given in exchange for sharing det...

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Traklight Webinar with Shane Olafson and Kyle Siegal on Patent Dos and Don'ts for Startups

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A discussion of patent tips for startups, including:
- Carefully allocating precious startup funding
- Properly limiting disclosure of new products and concepts
- Understanding patent application timelines
- Knowing when a provisional application may be appropriate

A discussion of patent tips for startups, including:
- Carefully allocating precious startup funding
- Properly limiting disclosure of new products and concepts
- Understanding patent application timelines
- Knowing when a provisional application may be appropriate

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Traklight Webinar with Shane Olafson and Kyle Siegal on Patent Dos and Don'ts for Startups

  1. 1. Patent Do’s and Don’ts for Startups Moderated by: Mary Juetten Traklight, Founder & CEO Presented by: Shane Olafson & Kyle Siegal Lewis Roca Rothgerber
  2. 2. PATENT DO’S AND DON’TS FOR STARTUPS Presented by: Shane E. Olafson, Esq. and Kyle N. Siegal, Esq. Lewis Roca Rothgerber LLP Moderated by: Mary Juetten, Founder & CEO Traklight This presentation has been prepared for informational purposes only and is not legal advice. Readers should not act upon this information without seeking professional legal advice.
  3. 3. What IS a Patent? • A patent is a federal grant of exclusive rights for a limited time given in exchange for sharing details of the invention with the public. • Patents do not give their owner the right to practice the claimed invention. Only the right to exclude others from making, having made, using, selling, offering for sale, or importing the patented invention in the United States.
  4. 4. What is Patent-Eligible? Patent-Eligible NOT Patent-Eligible Process Laws of nature Machine Natural phenomena Manufacture Abstract ideas Composition of matter
  5. 5. DO: Have a Patent Strategy Every innovative company should have a patent strategy that: (1) supports the business and technology, and (2) is designed to increase the company’s value.
  6. 6. DO: Have a Patent Strategy • Protect the company’s core technology and next generation technology (freedom to operate + consider how patent protection can continue & prevent simple design-arounds)  Consider: can you police the technology? • Exclude or discourage competitors from encroaching  Antitrust Considerations: FRAND or Foe?
  7. 7. DO: Have a Patent Strategy • Generate revenue (e.g., licensing) • Attract investors – Patents should: • cover key technology, • have no apparent defects, and • not be dominated by unlicensed competitive patents
  8. 8. DO: Have a Patent Strategy • Reducing patent litigation exposure (leverage)
  9. 9. DO: Allocate Precious Startup Funding Wisely • Sticker shock! • Expect to pay $10,000 per utility application plus another $5,000 to $10,000 during prosecution • Understand that not all patents are equal
  10. 10. DO: Allocate Precious Startup Funding Wisely • Know your market • Identify the heart of your invention versus the extra bells and whistles • Consider a patent search
  11. 11. DON’T: Prematurely Disclose Patentable Subject Matter • Don’t give away the key to the kingdom before you even build the kingdom! • Understand the fundamental purpose of the patent system • The patent system is based on a quid pro quo deal between inventors and the public
  12. 12. DON’T: Prematurely Disclose New Product Concepts • You get something from the public— ability to exclude others from making, using, selling, offering to sell, or importing your invention within the U.S. • You disclose something to the public— complete manufacturing guide and instruction manual to a previously unknown technological advancement that the public can freely exploit after your patent expires
  13. 13. DON’T: Prematurely Disclose New Product Concepts • To get something from the public, you have to give something to the public • What happens if you disclose your end of the deal without first declaring your intent to take advantage of this quid pro quo deal called the patent system? • You can lose your right to apply for a patent on the disclosed invention • Why? The public already has what its wants—no reason to give you a patent anymore
  14. 14. DON’T: Prematurely Disclose New Product Concepts • Follow best practices to avoid this pitfall • Get written non-disclosure agreements from third parties like designers, manufacturers, and potential investors • Train employees on the importance of maintaining confidentiality • Have an established invention disclosure procedure in place
  15. 15. DON’T: Prematurely Disclose New Product Concepts • What about stubborn investors? Limit disclosure to a very high-level description and avoid discussing your “secret sauce” until a non-disclosure agreement is in place • Consider getting a provisional application on file well in advance of anticipated funding efforts
  16. 16. DO: Understand Patent Application Timelines • Patent application timelines are long!
  17. 17. DO: Understand Patent Application Timelines • Typical timeline: – File utility application –Wait 1.5 to 2 years for the USPTO to respond – Receive and respond to a first “office action” –Wait 3 to 6 months for the USPTO to respond – Repeat • But these timelines can be managed to a degree with effective up-front planning
  18. 18. DO: Know When A Provisional Application May Be Appropriate • What’s a “provisional” patent application? • First-to-file patent system means when you file matters as much as what you file • Provisional applications save your filing date but are not examined and do not turn into patents • You have one year to follow a provisional application with a full-blown utility application
  19. 19. DO: Know When A Provisional Application May Be Appropriate • If I have to pay again for a utility application within one year, why bother with a provisional application? • More flexible filing requirements allow for potential time and cost savings • Mark products with “patent pending” • Use the one-year window to test the waters: – Are investors interested in my invention?
  20. 20. DO: Get the Most Out of the Claims • Patents can be useful in different ways • Marketing tool vs. market tool • What are “patent claims”? • How is that term different than the term “patent”? • What makes one patent “high quality” and another “low quality”?
  21. 21. DO: Get the Most Out of the Claims • Imagine your patent claims as a picket fence surrounding a property
  22. 22. DO: Get the Most Out of the Claims Your invention Existing technologies
  23. 23. DO: Get the Most Out of the Claims Narrow claims
  24. 24. DO: Get the Most Out of the Claims Broad claims that overlap an existing technology
  25. 25. DO: Get the Most Out of the Claims Broad claims without overlapping existing technologies
  26. 26. DO: Understand Basic Licensing Considerations • What to license: Patents, patent applications and know-how – Licensee may need rights to other patents & know-how to practice the invention • Rights can be sliced and diced – Right to sublicense? • Patents are territorial (Entire U.S. vs. any subsection) – Can further restrict based on, for example, trade channels • Employee owns if not assigned • Joint inventors–no duty to account • May be exclusive or non-exclusive (the big consideration) – Only exclusive rights confers the ability to enforce the patent
  27. 27. DO: Conduct Periodic Patent Audits • Provides patent owner with a complete picture of its existing patent portfolio • Helps ensure the patent owner meets deadlines for maintaining patent rights • Helps identify potential risks, such as patent marking and chain-of-title issues • Enables patent owner to identify gaps in protection and outdated coverage
  28. 28. Considerations If Your Company Is Accused of Patent Infringement • Has suit already been filed? (PACER) • If not, consider preemptive legal action – Declaratory Judgment – PTAB (less expensive than district court) • Post Grant Review within nine months from patent grant • Inter Partes Review (after expiration of post grant review) • Pre-Issuance Submission
  29. 29. Considerations If Your Company Is Accused of Patent Infringement • Should you respond to a demand letter? – Consider the source – Consider the tone – Consider the merits (infringement and defenses) • Identify the asserted patents and the accused products – www.uspto.gov – Can you design around? • Consider sending a preservation letter • Consider obtaining an opinion letter regarding validity and/or infringement • Identify relevant Insurance Policies and Indemnity Obligations
  30. 30. Questions? Shane Olafson is a partner in Lewis Roca Rothgerber’s Intellectual Property and Litigation Practice Groups. As an engineer and artist, he understands the importance of innovation and enjoys helping businesses preserve and protect their intellectual property rights. Shane has an "AV/Preeminent Attorney" rating with Martindale- Hubbell, and is listed in the 2012 and 2013 editions of Southwest Rising Stars in the category of Intellectual Property Litigation. Kyle is a registered patent attorney in Lewis Roca Rothgerber’s Intellectual Property Group. He helps clients identify, protect, and enforce intellectual property rights. Kyle leverages his technical background in biomedical engineering and biotechnology to help clients strategically expand patent portfolios and litigate intellectual property disputes.
  31. 31. Remember to sign up for Traklight’s blog… The best place to get IP information from best practices to white papers to fun IP cultural topics!
  32. 32. Thank you for attending (and interacting)! We will send you a link to the recorded session and slides. Still have questions? Contact: info@traklight.com

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