What is Intellectual          Property Law ? “Intellectual property (IP) refers to creations of the  mind: inventions, li...
Why is it Important to Protect your Intellectual Property ?  Ability to protect core ideas  Limited term monopoly  Prov...
Types of IP Trade Secret    “Secret Sauce” Copyright    “Artistic expression in the way something looks or sounds” Pa...
Trade Secret Industrial and/or Commercial secrets Confidentiality agreements and Legal recourse May impact future emplo...
Copyright A legal term of for the exclusive rights of a creator’s  literary or artistic works Protection duration is lif...
Trademark A distinctive sign associated with goods or services    Distinctiveness needs to be maintained (e.g. Xerox) R...
Patent Exclusive limited term monopoly for a novel, useful, unobvious,  invention (20 Yrs from Date of Filing) 3 US type...
First Inventor to File US will be switching from First to Invent to a First  Inventor to File System on 3/16/2013    Syn...
Prior Art & International          Protection People will forever keep on “reinventing the wheel” Know your technology’s...
Provisional and Non-   Provisional Applications Provisional Application    Secures your spot in line as a filer    1 ye...
Typical Patent Application          Process Provisional Non-Provisional-Examiner Reviews Case Non-Final Rejection Clai...
Bayh-Dole Act Applicable to Universities, Small Businesses, and Non-  Profits ONLY! Designation and Ownership of IP righ...
How we protect against        copy-cat competitors? Trade Secrets      For many companies the greatest value are unique ...
Know Your Options in         Legal Firms Technical Competency is crucial    Patent Agent might be suffice for USPTO purp...
Refresher: Why you Should     keep IP Rights in Mind? Defense:      Future: defense against Patent Trolls or competitors...
Thank You Now switching topics for a second to make a brief  announcement about the recently launched Patents for  Humani...
OverviewFor over two centuries, strong patents have provided businessincentives that encourage technological progress to b...
Program Structure Awards competition Applicants describe how they have used patented technology  or products to address ...
CategoriesApplicants confront global challenges in:Medical TechnologyFood & NutritionClean TechnologyInformation Techn...
Awards Certificate for expedited USPTO processing:    appeal to internal Board of Appeals (BPAI)    ex parte reexaminat...
Selection Criteria   Two sets of criteria: use    and research   It’s about distribution (of    benefits)   Focus on re...
Humanitarian Useè   Subject Matter – patented tech. effectively addresses a    recognized humanitarian issue;i   Target Po...
More info Program info and materials:  http://www.uspto.gov/patentsforhumanity Apply or view submissions:  http://patent...
411 on IP 101 for Tech-Geeks in the Startup World
411 on IP 101 for Tech-Geeks in the Startup World
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411 on IP 101 for Tech-Geeks in the Startup World

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411 on IP 101 for Tech-Geeks in the Startup World

  1. 1. What is Intellectual Property Law ? “Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.” –WIPO “Congress shall have power…to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries…” –US Constitution Article 1 Section 8
  2. 2. Why is it Important to Protect your Intellectual Property ?  Ability to protect core ideas  Limited term monopoly  Provides a protected competitive advantage  Opportunity to recoup costs on necessary R&D  Defend one’s ideas from infringement  Commercialize your invention successfully no more “Grant Proposals”!
  3. 3. Types of IP Trade Secret  “Secret Sauce” Copyright  “Artistic expression in the way something looks or sounds” Patent  “Protects the embodiment or method of an idea” Trademark  “Branding” DO NOT USE THESE TERMS INTERCHANGEABLY!
  4. 4. Trade Secret Industrial and/or Commercial secrets Confidentiality agreements and Legal recourse May impact future employment opportunities Classic examples: Coca Cola or KFC Spice Blend Uniform Trade Secrets Act Economic Espionage Act of 1996
  5. 5. Copyright A legal term of for the exclusive rights of a creator’s literary or artistic works Protection duration is lifetime of Author plus 70 years Types of works: books, film, music, software algorithms, plays, etc… Tangibility of expression is key distinction between a copyright and a patent Registration is not required but it helps Fair Use Doctrine
  6. 6. Trademark A distinctive sign associated with goods or services  Distinctiveness needs to be maintained (e.g. Xerox) Registration is not required but it helps Duration is indefinite as long as it is in use and renewed every 10 years (First renewal must occur in between the 5th and 6th year time frame) (Find a better way of stating this point)
  7. 7. Patent Exclusive limited term monopoly for a novel, useful, unobvious, invention (20 Yrs from Date of Filing) 3 US types: Utility, Design, and Plant Patents are examined for viability thus full disclosure is required International Patent protection requires extensive planning First to Invent to now become First Inventor to File (AIA) Flow Diagram from the USPTO on the Process
  8. 8. First Inventor to File US will be switching from First to Invent to a First Inventor to File System on 3/16/2013  Syncing with the rest of the world’s IP Filing Systems Grandfathered into the First to Invent Category til 3/16/2013
  9. 9. Prior Art & International Protection People will forever keep on “reinventing the wheel” Know your technology’s competitive landscape Just because you have a patent does not mean your IP is protected Make sure the claims match up with the actual product US Patent is good only in the US PCT Applications provide an opportunity to file your patent protection globally with other country’s IP offices Hard to enforce adequate protection overseas without procuring Patents in foreign countries.  Unless you are a MNC or buddies with the USTR Rep
  10. 10. Provisional and Non- Provisional Applications Provisional Application  Secures your spot in line as a filer  1 year to take your idea and RTP towards POC  Cheap and effective Non-Provisional Application  Convert Provisional to a NP or file a NP on its own  Actual Patent Application (Title,Abstract, Spec, Claims, Drawings, etc…)  Backlog of initial review is on avg between 2-3 years  Patent Agent/Attorney represents your case to the USPTO where a Patent Examiner makes a legal, science, and technical determination on your case
  11. 11. Typical Patent Application Process Provisional Non-Provisional-Examiner Reviews Case Non-Final Rejection Claim Amendment by Filer Allowance or Final Rejection If Allowed-Done but if FR then an After-Final Typically Occurs If AF-Rejected then RCE, Abandonment, or Appeal to BPAI If case goes BPAI route can eventually go CAFC and then SCOTUS
  12. 12. Bayh-Dole Act Applicable to Universities, Small Businesses, and Non- Profits ONLY! Designation and Ownership of IP rights becomes crucial during Bayh-Dole Implications (Major Points)  Re-assigning of rights is generally prohibited  Deferred IP assignment in lieu of License-free arrangement for federally-sponsored research  Report each disclosed invention to the funding agency  File for Patent Protection  Must try to commercialize the invention  Share royalties with inventor  Use leftover funding for R&D and Education
  13. 13. How we protect against copy-cat competitors? Trade Secrets  For many companies the greatest value are unique un-definable processes and system designs, not specific easily ascertainable aspects.  This type of competitive info is best kept confidential. Do it best.  Sounds trivial, but if the best user experience is provided, including cost, to customers, it will be extremely difficult or intimidating for other companies to enter the market.  Capital intensiveness of the industry matters.
  14. 14. Know Your Options in Legal Firms Technical Competency is crucial  Patent Agent might be suffice for USPTO purposes  Patent Attorney makes more sense if litigation is part of the formula Lower Registration Number generally means more experienced practitioner  General Exception to the rule: A former patent examiner with 3+ years of experience Handle the initial documentation and prep-work yourself  Let the $500/hr attorney do the high level work
  15. 15. Refresher: Why you Should keep IP Rights in Mind? Defense:  Future: defense against Patent Trolls or competitors who may come after you due to significant revenue creation  Current: defense against competitors who want to slow the process down Education:  Learn what’s been patented already & who’s competing Revenue:  Patents may enable us to increase revenue by licensing our technology to others, without starting additional businesses Valuation:  Financial capital is required to build your business  The above points add value & confidence in your business model
  16. 16. Thank You Now switching topics for a second to make a brief announcement about the recently launched Patents for Humanity program!
  17. 17. OverviewFor over two centuries, strong patents have provided businessincentives that encourage technological progress to build ourmodern world. As we struggle against humanitarian issuesplaguing many of the worlds poor, patents play an essential rolein creating lasting solutions.The USPTO Patents for Humanity program creates businessincentives for patent holders to engage in humanitarian issues.After consulting with industry, universities, and non-profits, theUSPTO has developed this 12-month voluntary pilot program torecognize patent owners and licensees who apply their technologyto pressing global challenges.
  18. 18. Program Structure Awards competition Applicants describe how they have used patented technology or products to address humanitarian needs Up to 50 winners
  19. 19. CategoriesApplicants confront global challenges in:Medical TechnologyFood & NutritionClean TechnologyInformation Technology
  20. 20. Awards Certificate for expedited USPTO processing:  appeal to internal Board of Appeals (BPAI)  ex parte reexamination, including 1st appeal  examination of a patent application, including 1st appeal USPTO plaque at an awards ceremony Public recognition
  21. 21. Selection Criteria  Two sets of criteria: use and research  It’s about distribution (of benefits)  Focus on real-world results(C) Anna Ridout/Oxfam 2011
  22. 22. Humanitarian Useè Subject Matter – patented tech. effectively addresses a recognized humanitarian issue;i Target Population – the actions target an impoverished population; andn Demonstrated Impact – the actions have significantly increased application of the technology to address the humanitarian issue
  23. 23. More info Program info and materials: http://www.uspto.gov/patentsforhumanity Apply or view submissions: http://patentsforhumanity.challenge.gov/ Complete program rules in the Federal Register Notice at USPTO website Email patentsforhumanity@uspto.gov

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