SlideShare a Scribd company logo
HOW
TO
AVOID
AN
INTELLECTUAL
PROPERTY
DISASTER
IDEA
TO
IPO
Steven
Colby,
JD,
Ph.D.
Patent
Attorney
–
Rimon
Law,
PC
steven.colby@rimonlaw.com
©
Steven
Colby
2022
Feb
4,
2022
THE
DARK
SIDE…
WHAT
YOU
DON’T
KNOW
CAN
HURT
MISTAKES
1)
Ownership
2)
Ownership
3)
Waiting
4)
No
Strategy
5)
Understanding
the
Patent
1)
Specification
2)
Claims
OWNING
YOUR
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
NEED
TO
START
THINKING
ABOUT
IP?
•
Yesterday….
STRATEGY
•
Patent
for
the
Marketing
Person,
Not
the
Engineer
•
Product
Driven
•
Focus
on
Valuation
•
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
INTO
THE
DEVELOPMENT
OF
AN
IP
PORTFOLIO?
WHAT
CAN
I
GET?
•
Copyright
•
Trademark
•
Trade
Secrets
•
Patents
COMMON
TYPES
OF
PATENTS
PROVISIONAL
•
Placeholder
•
Quick
&
Easy
•
Inexpensive
•
ONE
Year
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?
2000
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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