This document discusses developing a minimum viable patent strategy for startups. It recommends that before a seed round, startups should file a provisional patent application and conduct a preliminary freedom-to-operate analysis of main competitors. Before a Series A round, startups should file a full patent application and conduct a broader freedom-to-operate analysis of relevant patents. The document also addresses common misunderstandings about patentability and infringement, and how to choose a patent attorney.

2. DEVELOPING A MVPS
LEAN STARTUP CONFERENCE
JEFFREY SCHOX, ESQ.
SCHOX PATENT GROUP
LINKEDIN.COM/IN/JSCHOX
TWITTER.COM/JSCHOX

4. Mechanical Software Electrical

6. Medtech
Accuri
Delphinus

8. Software
Duo Security
Twilio

10. Cleantech
Accio
Mission Motors

13. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else
3. generate licensing revenue

14. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else
3. generate licensing revenue

15. Why do startups file patents?
1. enforce against a competitor *
2. prevent the patenting by someone else
3. generate licensing revenue
*Takes 4-6 years to get a patent,
and costs $3M to enforce.

16. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else
3. generate licensing revenue

17. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else
3. generate licensing revenue

18. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else *
3. generate licensing revenue
*Patents cost about $40K each.
Whites papers are free.

19. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else
3. generate licensing revenue

20. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else
3. generate licensing revenue

21. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else
3. generate licensing revenue *
*It takes a huge effort

22. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else
3. generate licensing revenue

23. Why do startups file patents?

24. Why do startups file patents?
1. increase leverage over a partner
2. deter patent infringement lawsuit
3. stimulate investment or acquisition

25. Why do startups file patents?
1. increase leverage over a partner
2. deter patent infringement lawsuit
3. stimulate investment or acquisition

26. Why do startups file patents?
1. increase leverage over a partner
2. deter patent infringement lawsuit
3. stimulate investment or acquisition

27. Why do startups file patents?
1. increase leverage over a partner
2. deter patent infringement lawsuit
3. stimulate investment or acquisition

28. Why do startups file patents?
1. increase leverage over a partner
2. deter patent infringement lawsuit
3. stimulate investment or acquisition

29. Why do startups file patents?
1. increase leverage over a partner
2. deter patent infringement lawsuit
3. stimulate investment or acquisition

30. How to avoid the Biggest Patent Pitfall

31. How to avoid the Biggest Patent Pitfall
Loss of all patent rights in the U.S. if invention was:
(1) described in a printed publication, or
(2) in public use or on sale in the United States,
more than one year before the filing date of a
patent application.

32. How to avoid the Biggest Patent Pitfall

33. How to avoid the Biggest Patent Pitfall
Preserve patent rights in the U.S.
APP
public use

34. How to avoid the Biggest Patent Pitfall
Preserve patent rights in the U.S.
APP
public use

35. How to avoid the Biggest Patent Pitfall
Preserve patent rights in the U.S.
and abroad.
PRV APP
public use

36. What is patentable?

38. Not Valuable
Specific Product
General Concept Not Patentable

40. Invention!

41. Biggest Misunderstanding of Patent Law

42. Biggest Misunderstanding of Patent Law
The relationship between:
(a) the patentability of an invention, and
(b) the infringement of another patent.

44. Question: Who can make a frosted light bulb?
Pat. No. 223, 898 Pat. No. 1,687,510
Edison Pipkin
Electric-lamp Frosted light bulbs

45. Biggest Misunderstanding of Patent Law

46. Biggest Misunderstanding of Patent Law
Pioneering Improvement
invention invention

47. Biggest Misunderstanding of Patent Law

48. Biggest Misunderstanding of Patent Law
Pioneering Improvement
invention invention

50. Question: Who can make a frosted light bulb?
Answer: No one can.
Neither Edison nor Pipkin.

52. Biggest Misunderstanding of Patent Law
1. An invention may be patentable if it can be
distinguished from previous inventions.
2. A product may infringe an existing patent if
it contains all of the elements of a single
claim.
These two issues are independent of each
other.

54. What Do Investors Want to Hear?
1.You have determined what is patentable
(and have taken steps to protect your rights).
2.You have determined whether you infringe
any patent rights of your main competitors.
These two issues are independent of each
other.

56. How to Develop a MVPS
(Minimum Viable Patent Strategy)
Before Seed Round:
1. File a provisional application.
2. Conduct a preliminary freedom-to-
operate analysis on your main
competitors.

57. How to Develop a MVPS
(Minimum Viable Patent Strategy)

58. How to Develop a MVPS
(Minimum Viable Patent Strategy)
Before Series A Round:
1. File a full patent application.
2. Conduct a preliminary freedom-to-
operate analysis on all relevant patents.

59. How to Develop a MVPS
(Minimum Viable Patent Strategy)

60. How to Develop a MVPS
(Minimum Viable Patent Strategy)

61. How to Develop a MVPS
(Minimum Viable Patent Strategy)

62. How to Develop a MVPS
(Minimum Viable Patent Strategy)

63. How to Develop a MVPS
(Minimum Viable Patent Strategy)

64. How to Develop a MVPS
(Minimum Viable Patent Strategy)

65. How to Develop a MVPS
(Minimum Viable Patent Strategy)

66. How to Develop a MVPS
(Minimum Viable Patent Strategy)

68. How to choose a Patent Attorney

71. Legal
Biz
Tech

73. Thanks
JEFFREY SCHOX, ESQ.
SCHOX PATENT GROUP
LINKEDIN.COM/IN/JSCHOX
TWITTER.COM/JSCHOX