Common Investor Pitfalls
with Intellectual Property
and how to avoid them
Your hosts
Heidi Brun
Joint Head of Patent Department
Eitan, Mehulal & Sadot
Zack Miller
Partner, Investor Community
OurCr...
Many types of
Intellectual Property (IP)
Many types of IP
• Patents
• Trademarks
• Designs
• Copyrights
• Trade Secrets
Different types of
companies have different...
Many types of IP
Trade Secret vs. Patent
Due Diligence
Due Diligence
• Ownership
• Technology
• Claims
• Where filed
Ownership Issues
• Company ownership vs. inventors
• Employees vs. contractors (particularly for software)
• Inventor’s wi...
Ownership Research
• Online at various patent
offices
• Search via company name,
inventor names
• http://assignments.uspto....
Ownership Research
Ownership Research
Technology
Technology
• Is it brand-new tech? Or, improvement of a
successful one?
• Does the company have a new take on an old
idea?...
Big vs. small inventions
Big vs. small inventions
• Startups concentrate on their BIG inventions
• Do they have other good (smaller) ideas hiding
i...
Large number of
applications/patents
• Is this good? Does it mean that the company is
innovative?
• Yes — the company has ...
Technology Research I
• Patentability search — Google Patents:
Advanced Search
Technology Research I
Technology Research II
• Proviso 1 — any patents found, have to be provided to
USPTO, ILPTO
• Proviso 2 — patents found in...
Patent
Portfolios
Patent Portfolios I
• Multiple inventions
• Filings in multiple countries
• US only or around the world?
• US investors ha...
Patent Portfolios II
• When money runs tight, a startup won’t keep
up its patent portfolio
• Investors may have to jump in...
Patent Portfolios Research
• Search in Espacenet, Dialog, Thomson-
Reuters etc. for patent families
• Check status and any...
Patent Portfolios Research
Patent Portfolios Research
Patent Portfolios Research
Property
• Patents have value which outlives the
company
• Patents have a market
Heidi M Brun
Eitan, Mehulal & Sadot
+972-2-633-5021
+972-9-972-6000
heidib@ems-legal.com
www.ems-legal.com
Zack Miller
Our...
[webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them
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[webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

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Join Zack Miller, Head of the Investor Community at OurCrowd, and Heidi Brun, leading patent attorney and Joint Head of the Patent Department at Eitan, Mehulal & Sadot, as they discuss the importance of understanding the fundamentals of intellectual property rights in order to make informed investment decisions.

Join us to learn about:
The various types of Intellectual Property (IP) and how they work
Why it is important for investors to read patents
Techniques for valuing intellectual property and how investors can do their own ownership research
Management, strategizing and budgeting of patent portfolios for companies at different stages of development

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[webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

  1. 1. Common Investor Pitfalls with Intellectual Property and how to avoid them
  2. 2. Your hosts Heidi Brun Joint Head of Patent Department Eitan, Mehulal & Sadot Zack Miller Partner, Investor Community OurCrowd
  3. 3. Many types of Intellectual Property (IP)
  4. 4. Many types of IP • Patents • Trademarks • Designs • Copyrights • Trade Secrets Different types of companies have different IP needs
  5. 5. Many types of IP Trade Secret vs. Patent
  6. 6. Due Diligence
  7. 7. Due Diligence • Ownership • Technology • Claims • Where filed
  8. 8. Ownership Issues • Company ownership vs. inventors • Employees vs. contractors (particularly for software) • Inventor’s willingness to sign assignments • Patent laws in various countries vs. US law
  9. 9. Ownership Research • Online at various patent offices • Search via company name, inventor names • http://assignments.uspto.gov/ assignments/q?db=pat
  10. 10. Ownership Research
  11. 11. Ownership Research
  12. 12. Technology
  13. 13. Technology • Is it brand-new tech? Or, improvement of a successful one? • Does the company have a new take on an old idea? • How do the claims compare to the product? Are they on only a small part of the product? If so, is this still good? • What claims/patents do competitors have?
  14. 14. Big vs. small inventions
  15. 15. Big vs. small inventions • Startups concentrate on their BIG inventions • Do they have other good (smaller) ideas hiding in the patent applications? • Don’t always claim what can be claimed — applications may have valuable inventions described in applications that haven’t been claimed
  16. 16. Large number of applications/patents • Is this good? Does it mean that the company is innovative? • Yes — the company has many ideas • No — the company is good at defining its one invention in many ways (which may be good…) • Remember: Some startups write patents knowing investors don’t read them
  17. 17. Technology Research I • Patentability search — Google Patents: Advanced Search
  18. 18. Technology Research I
  19. 19. Technology Research II • Proviso 1 — any patents found, have to be provided to USPTO, ILPTO • Proviso 2 — patents found in search may have broad claims that company’s products may infringe. Need to deal. • Need to decide for yourself if: • current claims will issue • current claims are useful to the company • current claims are useful to your plans for the company
  20. 20. Patent Portfolios
  21. 21. Patent Portfolios I • Multiple inventions • Filings in multiple countries • US only or around the world? • US investors have a bias to US filings • On the other hand — the company may file in many countries • without realising the huge maintenance cost
  22. 22. Patent Portfolios II • When money runs tight, a startup won’t keep up its patent portfolio • Investors may have to jump in to keep rights active
  23. 23. Patent Portfolios Research • Search in Espacenet, Dialog, Thomson- Reuters etc. for patent families • Check status and any close dates — will the company be able to keep applications alive
  24. 24. Patent Portfolios Research
  25. 25. Patent Portfolios Research
  26. 26. Patent Portfolios Research
  27. 27. Property • Patents have value which outlives the company • Patents have a market
  28. 28. Heidi M Brun Eitan, Mehulal & Sadot +972-2-633-5021 +972-9-972-6000 heidib@ems-legal.com www.ems-legal.com Zack Miller OurCrowd +972-2-636-9000 +1-914-617-1026 zack@ourcrowd.com www.ourcrowd.com Thanks for joining us!

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