The document provides an overview of patenting and intellectual property (IP) strategy tailored for startups, highlighting various forms of IP, criteria for patentability, and the patent application lifecycle. It discusses the importance of patents in protecting competitive advantages, deterring competitors, and attracting investment, while also noting the challenges and costs involved in the process. Additionally, the document touches on controversies surrounding software patents and the differing views on their patentability in the US and EU.

1. PATENTS PRIMER
Patenting and IP Strategy for Startups
Dino Talic – 9 Dec 2011
Freelancer.com

2. Disclaimer
This does not constitute legal advice. Just a
quick intro to the basic concepts.

3. Forms of Intellectual Property Term
Copy-
right
Music, Art, etc Life + 70 years
14 years
Industrial Property
Design
Patent 20 years
Trademark 10 years * X
Trade Secret ∞

4. Forms of Intellectual Property Term
Copy-
right
Music, Art, etc Life + 70 years
14 years
Industrial Property
Design
This presentation
Patent 20 years
Trademark 10 years * X
Trade Secret ∞

5. Patent
• Exclusive monopoly in exchange for disclosure of
invention
Disclosure
Time-limited Monopoly

6. Patent Jurisdictions
• A patent is only valid in the jurisdiction in which it is
granted
• World Intellectual Property Organization (WIPO)
• Patent Cooperation Treaty (PCT)
• Provides World filing for Patent Application

7. Criteria for Patentability
• Patentable subject matter
• Some exclusions – e.g. Scientific discoveries, mathematical theories,
etc.
• Useful
• Invention must give rise to a specific, substantial and credible utility
• Novel
• Not already known or previously disclosed
• Non-obvious
• Must be inventive. Non-obvious to a person versed in the art.
• Combination of prior art is not inventive – must be a distinct and non-
obvious advantage

8. What can Typically be Patented
Not valuable
Specific
Product
Invention
Not patentable,
not enforceable
General Concept

9. Valuable Patent
• Enforceable – obvious when a competitor is using
patent and it will succeed in court
• Not easily avoidable – no obvious alternatives

10. Lifecycle of a patent
Publication Search and
Filing of Patent Formal Grant and Opposition
of Substantive
Application Examination Publication Proceedings
Application Examination

11. Lifecycle of a patent
Engineering involvement
Publication Search and
Filing of Patent Formal Grant and Opposition
of Substantive
Application Examination Publication Proceedings
Application Examination
• Prior art search
• Patent Application draft
• Claim drafting (with aid
of IP lawyer!)

12. Lifecycle of a patent
Engineering involvement
Publication Search and
Filing of Patent Formal Grant and Opposition
of Substantive
Application Examination Publication Proceedings
Application Examination
• Response to
Office Actions

13. Lifecycle of a patent
Engineering involvement
Publication Search and
Filing of Patent Formal Grant and Opposition
of Substantive
Application Examination Publication Proceedings
Application Examination
• Expert witness
in litigation

14. Anatomy of a Patent
• Take as example US5579430
• Patent covering the MP3 format for audio compression
• Assigned to the Fraunhofer Institute
• Eventually lead to the development of the open source
Ogg Vorbis file format as an alternative

15. Anatomy of a Patent
Patent #
Title Date
granted
Inventors
Relevant
Assignee Prior Art
(Owner)
Priority
Date Abstract

16. Anatomy of a Patent

17. Anatomy of a Patent

18. Anatomy of a Patent – Detailed Description

19. Anatomy of a Patent - Claims

20. Reasons to file a Patent
• Protect competitive advantage - prevent competitors from
using our inventive technology
• Prevent competitors from patenting similar technology
• Generate licensing revenue

21. Realities for a Startup
• Protect competitive advantage - prevent competitors from
using our inventive technology
• Prevent competitors from patenting similar technology
• Generate licensing revenue
Takes 4 – 6 years to get a patent granted. On average
$3M US to enforce

22. Realities for a Startup
• Protect competitive advantage - prevent competitors from
using our inventive technology
• Prevent competitors from patenting similar technology
• Generate licensing revenue
Patents cost ~$50k each. Disclosure is free.

23. Realities for a Startup
• Protect competitive advantage - prevent competitors from
using our inventive technology
• Prevent competitors from patenting similar technology
• Generate licensing revenue
Very costly and difficult to negotiate, especially for small
companies

24. Reasons a Startup should file a Patent
• Increase leverage over a partner
• Deter a patent lawsuit
• Increase attractiveness for investment or acquisition

25. Why does Freelancer care?
• Our competitors have patents
• We are worth suing
• Raising capital or selling company is difficult without IP
• Deter trolls

26. Patents – joint effort
• Think about what is potentially innovative in your work
• Can we patent something now what we are likely to do in
the future
• Seek help:
• Fleshing out a concept
• Preliminary Prior Art search
• If your idea goes through to filing you will be an inventor!

27. Controversies
• Particularly for software patents
• Non-tangible – should they be patentable:
• US says YES
• EU says NO
• Patent trolls – Intellectual Ventures

28. Further Reading
• Inventing the Future – An Introduction to Patents
http://www.wipo.int/freepublications/en/sme/917/wipo_pub_
917.pdf
• Patent Absurdity: How Software Patents broke
the System
http://patentabsurdity.com/

29. References
• What Do Startups Need to Know about Patent Law
http://www.slideshare.net/JSchox/what-do-startups-need-to-know-about-
patent-law
• Inventing the Future – An Introduction to
Patenhttp://www.wipo.int/freepublications/en/sme/917/wipo_pub_917.pdf