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HOW TO AVOID AN
INTELLECTUAL
PROPERTY DISASTER
IDEATO IPO
Steven Colby, JD, Ph.D.
Patent Attorney – Rimon Law, PC
steven.colby@rimonlaw.com
© Steven Colby 2022
12/13/2022
THE DARK
SIDE…
WHATYOU DON’T KNOW CAN HURT
MISTAKES
1) Ownership
2) Ownership
3) Waiting
4) No Strategy
5) Understanding the Patent
1) Specification
2) Claims
OWNINGYOUR IP
• Ownership initially vests in the
INVENTORS (USA)
• Applications must be assigned to
the company
• Assign Clauses
• Employer IP
• Assignment process
OTHER PEOPLE’S IP
• The start-up viewpoint
• Read the literature
• Keep records
• Open source trap
WHEN DO I NEEDTO START
THINKING ABOUT IP?
• Yesterday….
STRATEGY
• Patent for the Marketing Person,
Not the Engineer
• Product Driven
• Focus onValuation
• Make IP more than just a Checkbox
SEEING THE
LIGHT…
IP CAN MAKE YOU RICH(ER)
WHY WOULD
YOU DO THIS?
WHY WOULD A CASH LIMITED STARTUP
PUT THOUSANDS OF DOLLARS INTOTHE
DEVELOPMENT OF AN IP PORTFOLIO?
WHAT CAN I GET?
• Copyright
• Trademark
• Trade Secrets
• Patents
COMMON TYPES OF PATENTS
PROVISIONAL
• Placeholder
• Quick & Easy
• Inexpensive
• ONEYear
NON-PROVISIONAL
• Ornamental
• 14 years
• Moderate Cost
DESIGN
• Enforceable Rights
• 20 years
• High Cost
WILL I RULE THE
WORLD WITH
MY PATENTS?
WHAT DOES THIS ALL COST?
2500
18000
30000
$0
$5,000
$10,000
$15,000
$20,000
$25,000
$30,000
$35,000
Provisional Non-Provisional filing Patent Issue
Patent Costs (US)
First Application Family Members
How to Avoid an Intellectual Property Disaster

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How to Avoid an Intellectual Property Disaster

  • 1. HOW TO AVOID AN INTELLECTUAL PROPERTY DISASTER IDEATO IPO Steven Colby, JD, Ph.D. Patent Attorney – Rimon Law, PC steven.colby@rimonlaw.com © Steven Colby 2022 12/13/2022
  • 3. MISTAKES 1) Ownership 2) Ownership 3) Waiting 4) No Strategy 5) Understanding the Patent 1) Specification 2) Claims
  • 4. OWNINGYOUR IP • Ownership initially vests in the INVENTORS (USA) • Applications must be assigned to the company • Assign Clauses • Employer IP • Assignment process
  • 5. OTHER PEOPLE’S IP • The start-up viewpoint • Read the literature • Keep records • Open source trap
  • 6. WHEN DO I NEEDTO START THINKING ABOUT IP? • Yesterday….
  • 7. STRATEGY • Patent for the Marketing Person, Not the Engineer • Product Driven • Focus onValuation • Make IP more than just a Checkbox
  • 8. SEEING THE LIGHT… IP CAN MAKE YOU RICH(ER)
  • 9. WHY WOULD YOU DO THIS? WHY WOULD A CASH LIMITED STARTUP PUT THOUSANDS OF DOLLARS INTOTHE DEVELOPMENT OF AN IP PORTFOLIO?
  • 10. WHAT CAN I GET? • Copyright • Trademark • Trade Secrets • Patents
  • 11. COMMON TYPES OF PATENTS PROVISIONAL • Placeholder • Quick & Easy • Inexpensive • ONEYear NON-PROVISIONAL • Ornamental • 14 years • Moderate Cost DESIGN • Enforceable Rights • 20 years • High Cost
  • 12. WILL I RULE THE WORLD WITH MY PATENTS?
  • 13. WHAT DOES THIS ALL COST? 2500 18000 30000 $0 $5,000 $10,000 $15,000 $20,000 $25,000 $30,000 $35,000 Provisional Non-Provisional filing Patent Issue Patent Costs (US) First Application Family Members