The document discusses the various types of intellectual property (IP) protected by the United States Patent and Trademark Office, including patents, copyrights, trade secrets, and trademarks. It outlines the benefits of obtaining patents, such as market entry and protection against infringement, as well as the processes involved in patent application and the importance of strategic IP management for startups. Additionally, it emphasizes the role of IP in attracting investment and enhancing the value of a company's assets.

1. UNITED STATES PATENT AND
TRADEMARK OFFICE
Patents, Innovation, and
Entrepreneurship
October 15th, 2014
John Cabeca
Director of the Silicon Valley United States Patent and
Trademark Office

2. UNITED STATES PATENT AND
TRADEMARK OFFICE
Types of Intellectual
Property
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3. UNITED STATES PATENT AND TRADEMARK OFFICE
3
Overview of Intellectual Property
What’s Protected? Examples Protection Lasts for:
Utility
Patent
Inventions iPod, chemical fertilizer,
process of manipulating
genetic traits in mice
20 years from the date of
filing regular patent
application
Design
Patent
Ornamental (non functional)
designs
Unique shape of electric guitar,
design for a lamp
14 years
Copyright Books, photos, music, fine art,
graphic images, videos, films,
architecture, computer
programs
Michael Jackson’s Thriller
(music, artwork and video),
Windows operating system
The life of the author plus 70
years (or for some works, 95
years from first publication)
Trade
Secret
Formulas, methods, devices or
compilations of information
which is confidential and gives a
business an advantage
Coca-Cola formula, survey
methods used by a pollster,
new invention for which patent
application has not been filed
As long as information
remains confidential and
functions as a trade secret
Trademark Words, symbols, logos, designs,
or slogans that identify and
distinguish products or services
Coca-Cola name and distinctive
logo, Pillsbury doughboy
character
As long as business
continuously uses trademark
in connection with goods or
services
10/15/2014

4. UNITED STATES PATENT AND TRADEMARK OFFICE
4
Can you find the IP in a mobile phone?
Trademarks:
• Made by "Nokia"
• Product "N95"
• Software "Symbian", "Java"
Patents:
• Data-processing methods
• Semiconductor circuits
• Chemical compounds
• Battery/Power Control
• Antenna
• Optics
Copyrights:
• Software code
• Instruction manual
• Ringtone
• …
Trade secrets:
• ???
Designs (some of them registered):
• Form of overall phone
• Arrangement of buttons in oval shape
• Three-dimensional wave form of buttons
• Sliding screen
© Nokia

5. UNITED STATES PATENT AND TRADEMARK OFFICE
What is a Patent?
• A Property Right
– Right to exclude others from making, using,
selling, offering for sale or importing the
claimed invention
– Limited term
– Territorial: protection only in territory that
granted patent; NO world-wide patent
510/15/2014

6. UNITED STATES PATENT AND TRADEMARK OFFICE
Why get a Patent?
• A patent can be:
– Used to gain entry into, and deter
others from, a market
– Used as a marketing tool to promote unique aspects
of a product
– Used to assert/enforce rights against an infringer or
competitor
– Used as collateral to obtain funding
– Create revenue – sell or license like other property
610/15/2014

7. UNITED STATES PATENT AND TRADEMARK OFFICE
IP Strategy is a Business Strategy
• Attractive to investors and buyers
• Deter patent infringement lawsuits
• Can increase leveraging power
- i.e. mergers and acquisitions
• Patents are a form of property than can add
value to a company’s assets
710/15/2014

8. UNITED STATES PATENT AND TRADEMARK OFFICE
The Path to a Patent
NEW
IDEA?
PROVISONAL
APPLICATION
(OPTIONAL)
NON-
PROVISIONAL
APPLICATION
(UTILITY)
PATENT!
10/15/2014 8
ONE YEAR!
2O YEARS

9. UNITED STATES PATENT AND TRADEMARK OFFICE
What is Patentable?
NEW,
NONOBVIOUS,
USEFUL, &
CLEARLY
DESCRIBED
Method
of using
Hardware
Method
of making
Software
9
Improvements
thereof

10. UNITED STATES PATENT AND TRADEMARK OFFICE
What is a Patent Claim
• The claims define the scope of the protection
of a patent
• The claim or claims must particularly point out
and distinctly claim, in technical terms, the
subject matter that the inventor(s) regard as
the invention
• Support for the claims must be found in the
patent specification
10/15/2014 10

11. UNITED STATES PATENT AND TRADEMARK OFFICE
Patent Claim Scope
Invention
Too General
Not valuable
Not patentable
11
Too
Specific

12. UNITED STATES PATENT AND TRADEMARK OFFICE
When should you file?
United States is a First Inventor to File System!
• Looking for international protection?
– You must file before public disclosure
• Only want US protection?
– You can file within one year after public disclosure
1310/15/2014

13. UNITED STATES PATENT AND TRADEMARK OFFICE
Pro Bono Help
http://www.uspto.gov/inventors/
proseprobono/index.jsp
In California: California
Lawyers for the Arts
http://www.calawyersforthe
arts.org/CIAP

14. UNITED STATES PATENT AND TRADEMARK OFFICE
• Process designed for issues that arise during patent
application prosecution; used to get an application
“back on track”
• Use on-line ombudsman form at
http://www.uspto.gov/patents/ombudsman.jsp
“This program brings a voice to the inventor that he
normally would not have ... THANK-YOU!!!!!!!”

15. UNITED STATES PATENT AND TRADEMARK OFFICE
Resources
• Utility Patent Application Guide: www.uspto.gov/patents/resources/types/utility.jsp
• Patent Process: www.uspto.gov/patents/process/index.js
• USPTO Patent Search Guide: www.uspto.gov/patents/process/search/index.jsp
• Inventor resources: www.uspto.gov/inventors/patents.jsp
• Micro Entity Limit: www.uspto.gov/patents/law/micro_entity.jsp
• Pro Bono Program and video on patent process:
www.uspto.gov/inventors/proseprobono
• Law school clinic pilot:
www.uspto.gov/ip/boards/oed/practitioner/agents/law_school_pilot.jsp
• Comprehensive Information and Training Material for First Inventor to File:
www.uspto.gov/aia_implementation/patents.jsp#heading-10
1610/15/2014

16. UNITED STATES PATENT AND
TRADEMARK OFFICE
Thank You
John.Cabeca@uspto.gov
SiliconValley@uspto.gov
www.uspto.gov
https://www.facebook.com/uspto.gov
http://www.youtube.com/user/USPTOvideo/
United States Patent and
Trademark Office
Thank You
John.Cabeca@uspto.gov
SiliconValley@uspto.gov
www.uspto.gov
https://www.facebook.com/uspto.gov
http://www.youtube.com/user/USPTOvideo/

17. Patents, Innovation, and
Entrepreneurship
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18. About Bob Zeidman
 President of Software Analysis &
Forensic Engineering Corp.
 President of Zeidman Consulting
 Founder of over 10 companies
 Developer of CodeSuite® tools for
finding software copyright infringement
 Expert witness in over 130 cases
 Author of Software IP Detective’s
Handbook and other books and articles
on engineering, law, and business
 Degrees from Cornell and Stanford
October 15, 2014 Patents, Innovation, and
Entrepreneurship
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19. Software Intellectual Property
 Copyrights
 Trade Secrets
 Patents
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Entrepreneurship
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20. Copyrights
 Protects expressions not ideas
 Protects software code not functionality
 You have a copyright upon creation
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Entrepreneurship
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21. Register Your Copyrights
 Register with U.S. Copyright Office
 Registration required to litigate
 Registered copyrights may win
“statutory damage” awards in litigation
 Registered copyrights may win legal
fees in litigation
 Infringement is easier to prove
 It’s inexpensive ($35)
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Entrepreneurship
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22. Trade Secret
Three factors:
 Not generally known to the public
 Confers economic benefit
 Reasonable efforts made to keep it secret
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Entrepreneurship
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23. Patent
 Exclusive rights to an invention
 Granted by government
 Fixed period of time
 In exchange for disclosure
 Must be
 Novel
 Inventive
 Useful
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Entrepreneurship
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24. Intellectual Property for Startups
 Copyright software
 Protects against employee theft
 File patents
 Competitive advantage
 A good defense
 Helps get funding
 Insurance if things go bad
 Maintain trade secrets
 Protects against employee competition
 Your secret sauce
October 15, 2014 Patents, Innovation, and
Entrepreneurship
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25. Tales From the Trenches
 eVault (remote backup)
 Patent
 Trademark
 Molasses (virtualization)
 Software and Patents
 NPEs: “Patent Trolls” or “Patent White
Knights”?
October 15, 2014 Patents, Innovation, and
Entrepreneurship
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26. Thank You
Bob Zeidman
Zeidman Consulting
Bob@ZeidmanConsulting.com
October 15, 2014 Patents, Innovation, and
Entrepreneurship
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27. Patents, Innovation and Entrepreneurship:
a discussion of the role of patents in your
company
October 15, 2014
Professor Laura Norris
Assistant Professor and Director of the Entrepreneurs’
Law Clinic
Santa Clara University, California, USA
lnorris@scu.edu
1

28. Why Patents?
• Use as a Shield
– Barrier to entry
– R&D expenses and time to market
• Use as a Sword
– Alternate “licensing” business plan
• Use as an Asset
– Attract investors
– Increase value of assets of company
– Increase credibility in technical community
– Use upon dissolution or wind-up of company
2

29. Why Patents?
• Copyrights cover copying
– Must show: someone copied or had access to work
• Trade Secrets cover misappropriation
– Must show: someone unlawfully took the work
• Patents cover innocent infringing (independent development)
– Must show: somone’s product or method does same thing
as in patent claims
• Trademark covers advertising
– Must show: your customers are likely to get confused
3

30. What About Other
People’s Patents?
4
• Informal Searches (risky)
• Obtain a “Freedom to Operate” opinion ($)
• File your own patents / copyrights / trademarks
• Defensive Publication (keep others from
patenting)
• Patent Pools
• Insurance