PATENTS PRIMERPatenting and IP Strategy for StartupsDino Talic – 9 Dec 2011Freelancer.com
DisclaimerThis does not constitute legal advice. Just aquick intro to the basic concepts.
Forms of Intellectual Property                 Term   Copy-   right                          Music, Art, etc   Life + 70 y...
Forms of Intellectual Property                     Term   Copy-   right                          Music, Art, etc      Life...
Patent• Exclusive monopoly in exchange for disclosure of invention                       Disclosure                   Time...
Patent Jurisdictions• A patent is only valid in the jurisdiction in which it is  granted• World Intellectual Property Orga...
Criteria for Patentability• Patentable subject matter  • Some exclusions – e.g. Scientific discoveries, mathematical theor...
What can Typically be Patented                    Not valuable         Specific         Product                         In...
Valuable Patent• Enforceable – obvious when a competitor is using patent and it will succeed in court• Not easily avoidabl...
Lifecycle of a patent                                 Publication   Search andFiling of Patent     Formal                 ...
Lifecycle of a patentEngineering involvement                                  Publication   Search and Filing of Patent   ...
Lifecycle of a patentEngineering involvement                                  Publication    Search and Filing of Patent  ...
Lifecycle of a patentEngineering involvement                                  Publication   Search and Filing of Patent   ...
Anatomy of a Patent• Take as example US5579430• Patent covering the MP3 format for audio compression• Assigned to the Frau...
Anatomy of a Patent                      Patent #   Title               Date                      granted Inventors       ...
Anatomy of a Patent
Anatomy of a Patent
Anatomy of a Patent – Detailed Description
Anatomy of a Patent - Claims
Reasons to file a Patent• Protect competitive advantage - prevent competitors from using our inventive technology• Prevent...
Realities for a Startup• Protect competitive advantage - prevent competitors from using our inventive technology• Prevent ...
Realities for a Startup• Protect competitive advantage - prevent competitors from using our inventive technology• Prevent ...
Realities for a Startup• Protect competitive advantage - prevent competitors from using our inventive technology• Prevent ...
Reasons a Startup should file a Patent• Increase leverage over a partner• Deter a patent lawsuit• Increase attractiveness ...
Why does Freelancer care?• Our competitors have patents• We are worth suing• Raising capital or selling company is difficu...
Patents – joint effort• Think about what is potentially innovative in your work• Can we patent something now what we are l...
Controversies• Particularly for software patents• Non-tangible – should they be patentable:  • US says YES  • EU says NO• ...
Further Reading• Inventing the Future – An Introduction to Patents   http://www.wipo.int/freepublications/en/sme/917/wipo_...
References• What Do Startups Need to Know about Patent Law http://www.slideshare.net/JSchox/what-do-startups-need-to-know-...
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Patents Primer - Filing patents in starups

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This is a presentation I gave at Freelancer.com. It is a quick introduction to the principles of patent law and analyses the various components of a patent. Finally, I discus patent strategy in the context of a startup.

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Patents Primer - Filing patents in starups

  1. 1. PATENTS PRIMERPatenting and IP Strategy for StartupsDino Talic – 9 Dec 2011Freelancer.com
  2. 2. DisclaimerThis does not constitute legal advice. Just aquick intro to the basic concepts.
  3. 3. Forms of Intellectual Property Term Copy- right Music, Art, etc Life + 70 years 14 years Industrial Property Design Patent 20 years Trademark 10 years * X Trade Secret ∞
  4. 4. Forms of Intellectual Property Term Copy- right Music, Art, etc Life + 70 years 14 years Industrial Property Design This presentation Patent 20 years Trademark 10 years * X Trade Secret ∞
  5. 5. Patent• Exclusive monopoly in exchange for disclosure of invention Disclosure Time-limited Monopoly
  6. 6. Patent Jurisdictions• A patent is only valid in the jurisdiction in which it is granted• World Intellectual Property Organization (WIPO) • Patent Cooperation Treaty (PCT) • Provides World filing for Patent Application
  7. 7. Criteria for Patentability• Patentable subject matter • Some exclusions – e.g. Scientific discoveries, mathematical theories, etc.• Useful • Invention must give rise to a specific, substantial and credible utility• Novel • Not already known or previously disclosed• Non-obvious • Must be inventive. Non-obvious to a person versed in the art. • Combination of prior art is not inventive – must be a distinct and non- obvious advantage
  8. 8. What can Typically be Patented Not valuable Specific Product Invention Not patentable, not enforceable General Concept
  9. 9. Valuable Patent• Enforceable – obvious when a competitor is using patent and it will succeed in court• Not easily avoidable – no obvious alternatives
  10. 10. Lifecycle of a patent Publication Search andFiling of Patent Formal Grant and Opposition of Substantive Application Examination Publication Proceedings Application Examination
  11. 11. Lifecycle of a patentEngineering involvement Publication Search and Filing of Patent Formal Grant and Opposition of Substantive Application Examination Publication Proceedings Application Examination• Prior art search• Patent Application draft• Claim drafting (with aid of IP lawyer!)
  12. 12. Lifecycle of a patentEngineering involvement Publication Search and Filing of Patent Formal Grant and Opposition of Substantive Application Examination Publication Proceedings Application Examination • Response to Office Actions
  13. 13. Lifecycle of a patentEngineering involvement Publication Search and Filing of Patent Formal Grant and Opposition of Substantive Application Examination Publication Proceedings Application Examination • Expert witness in litigation
  14. 14. Anatomy of a Patent• Take as example US5579430• Patent covering the MP3 format for audio compression• Assigned to the Fraunhofer Institute• Eventually lead to the development of the open source Ogg Vorbis file format as an alternative
  15. 15. Anatomy of a Patent Patent # Title Date granted Inventors Relevant Assignee Prior Art (Owner) Priority Date Abstract
  16. 16. Anatomy of a Patent
  17. 17. Anatomy of a Patent
  18. 18. Anatomy of a Patent – Detailed Description
  19. 19. Anatomy of a Patent - Claims
  20. 20. Reasons to file a Patent• Protect competitive advantage - prevent competitors from using our inventive technology• Prevent competitors from patenting similar technology• Generate licensing revenue
  21. 21. Realities for a Startup• Protect competitive advantage - prevent competitors from using our inventive technology• Prevent competitors from patenting similar technology• Generate licensing revenue Takes 4 – 6 years to get a patent granted. On average $3M US to enforce
  22. 22. Realities for a Startup• Protect competitive advantage - prevent competitors from using our inventive technology• Prevent competitors from patenting similar technology• Generate licensing revenue Patents cost ~$50k each. Disclosure is free.
  23. 23. Realities for a Startup• Protect competitive advantage - prevent competitors from using our inventive technology• Prevent competitors from patenting similar technology• Generate licensing revenueVery costly and difficult to negotiate, especially for smallcompanies
  24. 24. Reasons a Startup should file a Patent• Increase leverage over a partner• Deter a patent lawsuit• Increase attractiveness for investment or acquisition
  25. 25. Why does Freelancer care?• Our competitors have patents• We are worth suing• Raising capital or selling company is difficult without IP• Deter trolls
  26. 26. Patents – joint effort• Think about what is potentially innovative in your work• Can we patent something now what we are likely to do in the future• Seek help: • Fleshing out a concept • Preliminary Prior Art search • If your idea goes through to filing you will be an inventor!
  27. 27. Controversies• Particularly for software patents• Non-tangible – should they be patentable: • US says YES • EU says NO• Patent trolls – Intellectual Ventures
  28. 28. Further Reading• Inventing the Future – An Introduction to Patents http://www.wipo.int/freepublications/en/sme/917/wipo_pub_ 917.pdf• Patent Absurdity: How Software Patents broke the System http://patentabsurdity.com/
  29. 29. References• What Do Startups Need to Know about Patent Law http://www.slideshare.net/JSchox/what-do-startups-need-to-know-about- patent-law• Inventing the Future – An Introduction to Patenhttp://www.wipo.int/freepublications/en/sme/917/wipo_pub_917.pdf

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