This document provides an overview of intellectual property concepts for startups, including trademarks, patents, and trade secrets. It addresses common questions around when to invest in intellectual property protection and differences between trademarks and patents. The document also covers topics like provisional patent applications, design patents, licensing intellectual property, and university spinoffs.
The document discusses intellectual property protection for startups, focusing on patents and trademarks. It explains that intellectual property includes trademarks, patents, copyrights, trade secrets, and publicity rights. It then provides guidance on when a startup should consider patents or trademarks to protect their innovations and brands. Key questions addressed include determining if an idea is patentable, when to start investing in intellectual property protection, and whether filings are needed before certain activities like crowdfunding campaigns.
Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar hosted a seminar series on intellectual property basics for Temecula’s business community. This presentation walks the viewer through how to file for a patent. Entrepreneurs, investors, startups, inventors and anyone interested in learning how intellectual property and patents can help their business will benefit from this presentation.
The Gannons Intellectual Property Technology seminar brings together respected professionals from the legal and commercial technology sectors.
Our seminar covers:
Tech and Software: Discover how businesses navigate, embrace and compete with the deluge of disruptive technologies.
IP Tech from a Legal perspective: Resolve the major legal challenges faced by tech firms. We share our knowledge and expertise.
IP Insurance: Intellectual property insurance needn't be expensive. We demonstrate the options available for Tech businesses.
The Speakers:
Jimmy Vestbirk - a technologist with a focus on LawTech and works with start ups.
Graham Bell - a technical consultant specialising in product development, and has extensive international experience advising clients in the creation, application and exploitation of technology with a core focus in telecommunications and consumer electronics.
Amardeep Dhillon - a barrister who specialises in IP. Amardeep is regularly instructed in matters in the High Court, Companies Court and has appeared before the Court of Appeal. He will discuss case studies on IP and Technology.
An IP Expert in ATE (after the event) and BTE (before the event) insurance solutions helping businesses to reduce their financial risks in litigation.
This seminar was created and delivered by Michelle Holoubek, Don Featherstone, and Gaby Longsworth of Sterne Kessler on 07/30 for Impact.tech x Fifty Years.
Patent ownership can be complex when dealing with employee inventions. Employment agreements should include express provisions assigning patent rights to ensure the employer owns any patents resulting from employee inventions. While mere employment is not enough to assign ownership under US law, a present assignment of inventions in an employment agreement can help establish clear ownership. Even with an agreement, a formal assignment should be filed once a patent application is prepared to provide notice to third parties. Trademarks can also intersect with patents, so activities to establish trademark rights need to be considered for any impact on patent rights or grace periods.
Deck designed and delivered by Ian Bell from the Canadian Intellectual Property Office during his session at the Vancouver Innovation Labs (May 24th, 2016)
The document discusses intellectual property protection for startups, focusing on patents and trademarks. It explains that intellectual property includes trademarks, patents, copyrights, trade secrets, and publicity rights. It then provides guidance on when a startup should consider patents or trademarks to protect their innovations and brands. Key questions addressed include determining if an idea is patentable, when to start investing in intellectual property protection, and whether filings are needed before certain activities like crowdfunding campaigns.
Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar hosted a seminar series on intellectual property basics for Temecula’s business community. This presentation walks the viewer through how to file for a patent. Entrepreneurs, investors, startups, inventors and anyone interested in learning how intellectual property and patents can help their business will benefit from this presentation.
The Gannons Intellectual Property Technology seminar brings together respected professionals from the legal and commercial technology sectors.
Our seminar covers:
Tech and Software: Discover how businesses navigate, embrace and compete with the deluge of disruptive technologies.
IP Tech from a Legal perspective: Resolve the major legal challenges faced by tech firms. We share our knowledge and expertise.
IP Insurance: Intellectual property insurance needn't be expensive. We demonstrate the options available for Tech businesses.
The Speakers:
Jimmy Vestbirk - a technologist with a focus on LawTech and works with start ups.
Graham Bell - a technical consultant specialising in product development, and has extensive international experience advising clients in the creation, application and exploitation of technology with a core focus in telecommunications and consumer electronics.
Amardeep Dhillon - a barrister who specialises in IP. Amardeep is regularly instructed in matters in the High Court, Companies Court and has appeared before the Court of Appeal. He will discuss case studies on IP and Technology.
An IP Expert in ATE (after the event) and BTE (before the event) insurance solutions helping businesses to reduce their financial risks in litigation.
This seminar was created and delivered by Michelle Holoubek, Don Featherstone, and Gaby Longsworth of Sterne Kessler on 07/30 for Impact.tech x Fifty Years.
Patent ownership can be complex when dealing with employee inventions. Employment agreements should include express provisions assigning patent rights to ensure the employer owns any patents resulting from employee inventions. While mere employment is not enough to assign ownership under US law, a present assignment of inventions in an employment agreement can help establish clear ownership. Even with an agreement, a formal assignment should be filed once a patent application is prepared to provide notice to third parties. Trademarks can also intersect with patents, so activities to establish trademark rights need to be considered for any impact on patent rights or grace periods.
Deck designed and delivered by Ian Bell from the Canadian Intellectual Property Office during his session at the Vancouver Innovation Labs (May 24th, 2016)
Prenuptial Patenting: Responsible Engagement with Engineering FirmsAurora Consulting
You have your big idea and now it’s time to breathe it into existence, but you need some help with the development. Like many others, you may turn to the aid of an engineering firm or dev shop. This relationship is a marriage of sorts. But it’s a marriage that is designed to inevitably end in divorce. How cleanly, smoothly, and successfully this separation goes depends on the steps that you take before it officially begins.
Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, leads a discussion into Responsible Engagement with Engineering Firms, or what we affectionately refer to here as “Prenuptial Patenting”. Ashley and our all star patent panel walk you down the aisle and explore everything you need to know to experience marital bliss and an amicable divorce with your engineering partners. This talk covers the full life cycle from vetting partners to post development concerns and everything in between – with particular focus on relationship complexities like IP ownership, assignment from engineering firm inventors back to you, and how to avoid the traps of viral IP.
Blog post: https://www.aurorapatents.com/blog/prenuptial-patenting
Podcast Episode: https://patentlystrategic.buzzsprout.com
Your SR&ED and Intellectual Property PrimerBoast Capital
IP ownership is an important topic that comes up frequently when companies claim SR&ED. During this webinar, Boast Capital asked PCK to share more info about getting into the patent system, IP protection and how it impacts companies.
This document provides an overview and summary of intellectual property concepts including patents, trademarks, copyright, industrial designs, and trade secrets. It also discusses strategies for patent filing, including whether to file, where to file, and the differences between US provisional and non-provisional patent applications. Key recommendations include establishing an IP strategy, prioritizing inventions based on business plans and budgets, and using the patent cooperation treaty or priority applications to keep filing options open.
Traklight Webinar with Shane Olafson and Kyle Siegal on Patent Dos and Don'ts...Traklight.com
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
This document discusses maximizing and protecting intellectual property. It defines intellectual property as patents, copyrights, trademarks, and trade secrets. It emphasizes the importance of intellectual property for companies and provides examples of how companies have benefited from or lost value due to their intellectual property. Finally, it discusses best practices for protecting intellectual property, such as patents, non-disclosure agreements, and employee agreements.
This document discusses maximizing and protecting intellectual property. It defines intellectual property as patents, copyrights, trademarks, and trade secrets. It emphasizes the importance of intellectual property for companies and provides examples of how intellectual property adds value. Finally, it discusses strategies for protecting intellectual property, such as patents, non-disclosure agreements, and employee contracts, as well as generating revenue from intellectual property through licensing.
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...MaRS Discovery District
Discover why intellectual property is a critical asset to your company. Within the context of current economic uncertainty, this series covers cost-effective strategies for securing IP and patent rights to enhance the market value and competitive position of your life sciences or ICE company.
AZCI Commercial Reality Start Up Session Protecting And Managing Your Intel...sdgarrison
The document provides information on intellectual property protection for startup companies, including types of intellectual property like patents, trademarks, and trade secrets; developing an IP portfolio and valuation methods; and strategies for protecting trade secrets through policies, agreements, and security measures.
This document provides an overview of the patent process. It discusses how patents provide limited monopoly rights to prevent others from practicing an invention for up to 20 years. Key aspects of patentability include the invention being useful, novel, and non-obvious. The patent application process involves drafting a specification and claims, filing, responding to office actions, and iterating until the patent is allowed. Public disclosure prior to patenting can result in losing patent rights, so applications should be filed before any unprotected disclosure.
How To Protect Your Company's Intellectual PropertySecureDocs
This presentation covers cost-effective patent protection for inventions worldwide and protection tactics for unpatented trade secrets. It also gives a compelling argument for why companies should go against the status quo when filing for patents which can help save money and speed up the total patenting process.
August 27, 2018 General IP presentation for SCOREKirk Damman
This document provides an overview of intellectual property and strategies for protecting intellectual property. It defines various types of intellectual property including patents, trademarks, copyrights, trade secrets, publicity rights, and databases. It explains why intellectual property is an important asset for companies and that IP laws are complex and misunderstood by the general public. The document provides details on obtaining different types of patents, trademarks, and copyrights. It emphasizes the importance of working with an intellectual property attorney and outlines common mistakes made in protecting intellectual property. Overall, the summary emphasizes that intellectual property protection is an ongoing process rather than a single action and encourages asking questions.
This IP Strategy Overview was presented at a conference of innovators at Georgia Tech's College of Architecture in October 2013. The goal of this presentation is to go beyond the usual lawyer-generated content to highlight not only the positive aspects of IP, but also to give a reality check as to the likely ROI of investment in protection. A basic overview of IP (patents, copyrights, trademarks, trade secrets) is provided. Additionally, commonly overlooked forms of intangible asset value are presented. A case study of an innovation protection strategy is highlighted. Recommendations for business relevant IP and patent protection strategies are also included.
Patent Searching: Sleuthing Your Way to Stronger PatentsAurora Consulting
You have an idea and you’d like to protect it. But can you? Is it novel? Non-obvious? Would you eventually be able to license or enforce your patent down the road? Who else is competing in this area and where’s the whitespace? If you get the patent, can you freely produce and sell the idea, without the costly risk of infringement litigation?
These questions and the quest for their answers unfold like a detective mystery. The sheer magnitude of source material to sift through is overwhelming. 172 countries with patent systems, over 11 million active patents across the globe, millions more published, but not granted, topped off with endless volumes of non-patent literature. A multitude of keywords, synonyms, and domain specific languages. Countless databases. A cacophony of clues, mixed with an abundance of superficially convincing evidence that could ultimately prove irrelevant. An overly litigious villain competitor lurking around the corner. And the greater powers of observation and the superior mind of a detective to cut through it all and make plain the answers to our untrained eyes!
Shelley Couturier, Patent Strategist, Search Specialist, and Chief Sleuth here at Aurora, leads an exploration into the low cost, high return world of patent searching. The domain is complex, but the efforts have one of the highest possible ROIs of anything you can do, especially in the early stages of your patent journey. With some practical guidance and a little help, patent searching will save you significant time, money, and effort in the long run, all while yielding a much stronger patent overall. I assure you, listening in will be a gift to future self.
Shelley shares:
* Why inventors and companies should have a professional search conducted
* Offensive and defensive search strategies for companies both big and small
* Patent search types and when they apply
* Strategies and tips learned over a decade of searching
* A guided sample invalidity search walkthrough
This presentation explores the types of prior art patent searches including:
* novelty and non-obviousness
* patentability
* freedom-to-operate
* landscape
* validity and invalidity
* state of the art
Podcast: https://patentlystrategic.buzzsprout.com/1734511/9086121-patent-searching-sleuthing-your-way-to-stronger-patents
Blog post: https://www.aurorapatents.com/blog/new-podcast-patent-searching
Bradley Taub, a U.S. patent attorney, gave a presentation on patents and patent searching. He discussed what patents are, the different types of patents including utility and design patents, and the key parts of a patent like claims, drawings, and specifications. He emphasized the importance of claims in defining the legal boundaries of an invention. Taub also covered how to conduct a DIY patent search, including forming search terms and reviewing results, in order to determine if an invention is patentable. He provided a example of searching for patentability in a photo app invention. Taub's presentation provided an overview of the basics of patents and strategies for patent searching.
IT:AM Semina Series - Managing your secrets, protecting your assets - CambridgeEversheds Sutherland
This document summarizes an IT seminar series held by Eversheds LLP on managing secrets and protecting assets. The agenda included discussions on trade secret protection, non-disclosure agreements, software licensing, and the proposed Communications Data Bill. Key topics included how to define confidential information, analyzing NDAs, enforcing trade secret rights, and implications of the UsedSoft v. Oracle ruling for allowing resale of perpetual software licenses. Attendees were advised to prepare for expanded data collection powers under the new bill. The seminar provided legal perspectives on maintaining confidentiality in business.
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...MaRS Discovery District
Discover why intellectual property is a critical asset to your company. Within the context of current economic uncertainty, this series covers cost-effective strategies for securing IP and patent rights to enhance the market value and competitive position of your life sciences or ICE company.
This document discusses methods for estimating the total addressable market (TAM), serviceable available market (SAM), and serviceable obtainable market (SOM) for a company. It describes the top-down and bottom-up approaches to market sizing, providing examples of each for a company called Ugly Veggies that delivers discounted produce. The top-down approach estimates the SOM at $756 million by starting with total food spending and making assumptions to narrow it down, while the bottom-up approach estimates the SOM at $892 million by starting with customer purchasing habits and scaling up. Both approaches have pros and cons, so using both is recommended to obtain a more accurate market size estimate.
The document discusses the history and core principles of sales methodologies. It begins by reviewing some landmark sales methodologies from the past 50+ years like the Sandler Selling System and Challenger Sale. The goal of a sales methodology is outlined as maximizing results using best practices, aligning the sales team, and streamlining operations. Key principles discussed include qualifying leads, learning about customers, adapting approach, providing insights, and focusing on what customers care about. The presentation encourages salespeople to act as market experts who provide customers unique perspectives and insights about their business in order to differentiate themselves.
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Prenuptial Patenting: Responsible Engagement with Engineering FirmsAurora Consulting
You have your big idea and now it’s time to breathe it into existence, but you need some help with the development. Like many others, you may turn to the aid of an engineering firm or dev shop. This relationship is a marriage of sorts. But it’s a marriage that is designed to inevitably end in divorce. How cleanly, smoothly, and successfully this separation goes depends on the steps that you take before it officially begins.
Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, leads a discussion into Responsible Engagement with Engineering Firms, or what we affectionately refer to here as “Prenuptial Patenting”. Ashley and our all star patent panel walk you down the aisle and explore everything you need to know to experience marital bliss and an amicable divorce with your engineering partners. This talk covers the full life cycle from vetting partners to post development concerns and everything in between – with particular focus on relationship complexities like IP ownership, assignment from engineering firm inventors back to you, and how to avoid the traps of viral IP.
Blog post: https://www.aurorapatents.com/blog/prenuptial-patenting
Podcast Episode: https://patentlystrategic.buzzsprout.com
Your SR&ED and Intellectual Property PrimerBoast Capital
IP ownership is an important topic that comes up frequently when companies claim SR&ED. During this webinar, Boast Capital asked PCK to share more info about getting into the patent system, IP protection and how it impacts companies.
This document provides an overview and summary of intellectual property concepts including patents, trademarks, copyright, industrial designs, and trade secrets. It also discusses strategies for patent filing, including whether to file, where to file, and the differences between US provisional and non-provisional patent applications. Key recommendations include establishing an IP strategy, prioritizing inventions based on business plans and budgets, and using the patent cooperation treaty or priority applications to keep filing options open.
Traklight Webinar with Shane Olafson and Kyle Siegal on Patent Dos and Don'ts...Traklight.com
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
This document discusses maximizing and protecting intellectual property. It defines intellectual property as patents, copyrights, trademarks, and trade secrets. It emphasizes the importance of intellectual property for companies and provides examples of how companies have benefited from or lost value due to their intellectual property. Finally, it discusses best practices for protecting intellectual property, such as patents, non-disclosure agreements, and employee agreements.
This document discusses maximizing and protecting intellectual property. It defines intellectual property as patents, copyrights, trademarks, and trade secrets. It emphasizes the importance of intellectual property for companies and provides examples of how intellectual property adds value. Finally, it discusses strategies for protecting intellectual property, such as patents, non-disclosure agreements, and employee contracts, as well as generating revenue from intellectual property through licensing.
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...MaRS Discovery District
Discover why intellectual property is a critical asset to your company. Within the context of current economic uncertainty, this series covers cost-effective strategies for securing IP and patent rights to enhance the market value and competitive position of your life sciences or ICE company.
AZCI Commercial Reality Start Up Session Protecting And Managing Your Intel...sdgarrison
The document provides information on intellectual property protection for startup companies, including types of intellectual property like patents, trademarks, and trade secrets; developing an IP portfolio and valuation methods; and strategies for protecting trade secrets through policies, agreements, and security measures.
This document provides an overview of the patent process. It discusses how patents provide limited monopoly rights to prevent others from practicing an invention for up to 20 years. Key aspects of patentability include the invention being useful, novel, and non-obvious. The patent application process involves drafting a specification and claims, filing, responding to office actions, and iterating until the patent is allowed. Public disclosure prior to patenting can result in losing patent rights, so applications should be filed before any unprotected disclosure.
How To Protect Your Company's Intellectual PropertySecureDocs
This presentation covers cost-effective patent protection for inventions worldwide and protection tactics for unpatented trade secrets. It also gives a compelling argument for why companies should go against the status quo when filing for patents which can help save money and speed up the total patenting process.
August 27, 2018 General IP presentation for SCOREKirk Damman
This document provides an overview of intellectual property and strategies for protecting intellectual property. It defines various types of intellectual property including patents, trademarks, copyrights, trade secrets, publicity rights, and databases. It explains why intellectual property is an important asset for companies and that IP laws are complex and misunderstood by the general public. The document provides details on obtaining different types of patents, trademarks, and copyrights. It emphasizes the importance of working with an intellectual property attorney and outlines common mistakes made in protecting intellectual property. Overall, the summary emphasizes that intellectual property protection is an ongoing process rather than a single action and encourages asking questions.
This IP Strategy Overview was presented at a conference of innovators at Georgia Tech's College of Architecture in October 2013. The goal of this presentation is to go beyond the usual lawyer-generated content to highlight not only the positive aspects of IP, but also to give a reality check as to the likely ROI of investment in protection. A basic overview of IP (patents, copyrights, trademarks, trade secrets) is provided. Additionally, commonly overlooked forms of intangible asset value are presented. A case study of an innovation protection strategy is highlighted. Recommendations for business relevant IP and patent protection strategies are also included.
Patent Searching: Sleuthing Your Way to Stronger PatentsAurora Consulting
You have an idea and you’d like to protect it. But can you? Is it novel? Non-obvious? Would you eventually be able to license or enforce your patent down the road? Who else is competing in this area and where’s the whitespace? If you get the patent, can you freely produce and sell the idea, without the costly risk of infringement litigation?
These questions and the quest for their answers unfold like a detective mystery. The sheer magnitude of source material to sift through is overwhelming. 172 countries with patent systems, over 11 million active patents across the globe, millions more published, but not granted, topped off with endless volumes of non-patent literature. A multitude of keywords, synonyms, and domain specific languages. Countless databases. A cacophony of clues, mixed with an abundance of superficially convincing evidence that could ultimately prove irrelevant. An overly litigious villain competitor lurking around the corner. And the greater powers of observation and the superior mind of a detective to cut through it all and make plain the answers to our untrained eyes!
Shelley Couturier, Patent Strategist, Search Specialist, and Chief Sleuth here at Aurora, leads an exploration into the low cost, high return world of patent searching. The domain is complex, but the efforts have one of the highest possible ROIs of anything you can do, especially in the early stages of your patent journey. With some practical guidance and a little help, patent searching will save you significant time, money, and effort in the long run, all while yielding a much stronger patent overall. I assure you, listening in will be a gift to future self.
Shelley shares:
* Why inventors and companies should have a professional search conducted
* Offensive and defensive search strategies for companies both big and small
* Patent search types and when they apply
* Strategies and tips learned over a decade of searching
* A guided sample invalidity search walkthrough
This presentation explores the types of prior art patent searches including:
* novelty and non-obviousness
* patentability
* freedom-to-operate
* landscape
* validity and invalidity
* state of the art
Podcast: https://patentlystrategic.buzzsprout.com/1734511/9086121-patent-searching-sleuthing-your-way-to-stronger-patents
Blog post: https://www.aurorapatents.com/blog/new-podcast-patent-searching
Bradley Taub, a U.S. patent attorney, gave a presentation on patents and patent searching. He discussed what patents are, the different types of patents including utility and design patents, and the key parts of a patent like claims, drawings, and specifications. He emphasized the importance of claims in defining the legal boundaries of an invention. Taub also covered how to conduct a DIY patent search, including forming search terms and reviewing results, in order to determine if an invention is patentable. He provided a example of searching for patentability in a photo app invention. Taub's presentation provided an overview of the basics of patents and strategies for patent searching.
IT:AM Semina Series - Managing your secrets, protecting your assets - CambridgeEversheds Sutherland
This document summarizes an IT seminar series held by Eversheds LLP on managing secrets and protecting assets. The agenda included discussions on trade secret protection, non-disclosure agreements, software licensing, and the proposed Communications Data Bill. Key topics included how to define confidential information, analyzing NDAs, enforcing trade secret rights, and implications of the UsedSoft v. Oracle ruling for allowing resale of perpetual software licenses. Attendees were advised to prepare for expanded data collection powers under the new bill. The seminar provided legal perspectives on maintaining confidentiality in business.
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Discover why intellectual property is a critical asset to your company. Within the context of current economic uncertainty, this series covers cost-effective strategies for securing IP and patent rights to enhance the market value and competitive position of your life sciences or ICE company.
This document discusses methods for estimating the total addressable market (TAM), serviceable available market (SAM), and serviceable obtainable market (SOM) for a company. It describes the top-down and bottom-up approaches to market sizing, providing examples of each for a company called Ugly Veggies that delivers discounted produce. The top-down approach estimates the SOM at $756 million by starting with total food spending and making assumptions to narrow it down, while the bottom-up approach estimates the SOM at $892 million by starting with customer purchasing habits and scaling up. Both approaches have pros and cons, so using both is recommended to obtain a more accurate market size estimate.
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DI SEGUITO SONO PUBBLICATI, AI SENSI DELL'ART. 11 DELLA LEGGE N. 3/2019, GLI IMPORTI RICEVUTI DALL'ENTRATA IN VIGORE DELLA SUDDETTA NORMA (31/01/2019) E FINO AL MESE SOLARE ANTECEDENTE QUELLO DELLA PUBBLICAZIONE SUL PRESENTE SITO
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
June 2023 Myers Wolin, LLC - Confidential 2
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?
June 2023 Myers Wolin, LLC - Confidential 6
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
June 2023 Myers Wolin, LLC - Confidential 9
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”
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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?
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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?
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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”?
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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
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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.
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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
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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
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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.
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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
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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
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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?
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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
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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.
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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?
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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.
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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?
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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
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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
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40. Types of Trademarks
• Sound
– Three chimes for NBC
– Five tones for Intel
– McDonalds
– THX
• Aroma
• Motion
• Moving Images
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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
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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