This document provides an overview of intellectual property (IP) protection for innovators and entrepreneurs. It discusses that IP is only relevant if there is a validated business model with existing customers. The main types of IP protection are patents, trademarks, and copyrights. Patents protect inventions, trademarks protect brands, and copyrights protect creative works. The document focuses on the patent protection process, noting it can take 1-3 years and $5,000-$50,000 to obtain a utility patent. It emphasizes that patents do not guarantee business success - the market determines a patent's value. The document provides "dos and don'ts" for IP, such as validating the business first before filing patents.

1. What Innovators Need to Know
about IP Protection: A Business-
Focused Approach
Jackie Hutter, MS, JD
Jackie@TheHutterGroup.com

2. • 20 years as IP professional
– Law firm
• Prosecution and counseling
• Litigation
– Corporation
• Legal and innovation counsel
• Last 8 years as “IP Strategist”
– Put business issues before legal issues
– “Validate your business, not just mine”
– Truth telling, not risk mitigation
• Research scientist/inventor
– Insights from the trenches
– Also an entrepreneur
– I’ve made mistakes about lawyers, too
Copyright 2015
My Perspective

3. Protectable IP?
Must Understand What “IP” Means
Your
Business’
Intangible
Asset
Value
Patentable
Inventions
Trademarks
Brand
Equity
Goodwill
Business
Processes
Customer/
Suppliers
Employees
Others
Specific to
Business
Model
Copyright 2015

4. Is It Worth It to Protect Your IP?
• IP is only relevant when
you demonstrate that
customers exist for what
you want to sell
– No reason to protect
something that no one
wants!
• Must validate business
model before thinking
about IP protection
– Customer discovery is key
Copyright 2015

5. THE PATENT
PROTECTION PROCESS
Copyright 2015

6. Patent Types
1. Utility Patent:
Patents on inventions which function in a new
way or to provide a new result
2. Design Patent:
Patents on the non-functional or ornamentation
of something that already exists
3. Plant Patent:
Patents on types of plants that may be
reproduced by grafts and cuttings
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7. U.S. Utility Patent Applications
provisional
application
Allow filling without
any formal patent
claims, oath or
declaration or any
information
disclosure statement
Less costly
No real protection
“Saves place in line”
non-provisional
application
Contains at least a
specification, all the
drawing figures and
at least one claim.
Goes through
examination
Can be filed multiple
times
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8. Where Can You Obtain a Patent?
• USPTO
• State Intellectual Property Office of
China
• Japan Patent Office…
National
Patent Office
• International patent application
office
• headquartered in Geneva,
Switzerland
• Still must apply nationally
WIPO
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9. US Utility Patent Application Process
Invention Identified and
Vetted for Filing Expense
Application Drafted and
Filed by Attorney
$5,000-$50,000
Application Published
18 months
Office Action
12-36 months
Response by Attorney
Amendment of Claims
$3000-$10,000
Final Rejection
Allowance
$1500
Maintenance Fees
3.5, 7.0, 11.5 Years
$900, $2300, $3800
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10. What Patents Are (and Aren’t)
• Given by government for useful,
new and unobvious inventions
• Recognition that invention meets
the legal requirements for
patentability
– Checklist of statutory obligations
for both invention and way
patent is written
• Only market determines business
value of invention
Copyright 2015

11. Utility Patent Features
Exclusivity
• One patent per invention
– Can be slight variations between patents
• Without patent holder permission no one
can make, market, use, import, etc the
patented invention
– Otherwise, regarded as patent
infringement
Territory
• Patent limited to certain country
• No effect in other countries
• No such thing as an “International Patent”
Time
• Term of a patent is limited
• 20 years from earliest non-provisional
filing date
Copyright: The Hutter Group 2015

12. Patents as a Property Right
• Not a monopoly
• A right to exclude
– Broader
• Can use
• Not use
• Keep others from doing what they
would otherwise be free to do
• No right to practice the
invention claimed
– Owner can be blocked by other’s
patent rights
• Must ensure “freedom to operate”
Copyright 2015

13. • Can obtain patent < 1 year
• More expensive up front but
– Total process less expensive
– Issued patent could increase
startup valuation
Copyright 2015
Important New US Option: “TrackOne”

14. Licensing/Monetization
• Perception that licensing/monetization viable outcome
for protected IP
– “IP has value just because it exists”
• In reality, IP value is rare
– Patents cover novel and unobvious ideas
– People buy right to practice validated business
models
– If the idea protected by the patent has no
customers, then patent has no value
• Think of in context of exit value
– If customers protected by IP, then your IP has value
independently of value of the business itself
• “Must have”
– If have customers, but IP doesn’t prevent those
customers from being acquired, has less value
• “Nice to have”
– If IP has nothing to do with customers, IP not
valuable
• “No asset value”
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15. Enforcement of IP
• IP litigation expense prohibitive for startups
– “If you’re thinking about litigation, you’ve
lost.”
– Litigation is not a viable business model
for startups.
• Even if money not concern, enforcement still
difficult in some countries
– Use protection in local country to
leverage knock-offs in foreign countries
• Combine other forms IP/intangible asset
protection to reduce possibility that
competitors will be able to provide same
value to customers
– Make yourself the “go to” for customers
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16. Common “Do’s and Don’ts” for IP
Don’ts
• “Don’t believe the hype”
– The only person who needs a
patent is a patent attorney
– Investors often “check boxes”
• File too early
– Validate business models first
• File too late
– Beware of public disclosures and
offers for sale
• File too narrowly
– Focus on why customer cares vs.
how you solve the problem
• Outsource process to patent attorney
– Legal vs. business
Do’s
• Understand how IP can and will create
value
– “Make it cheaper to go through
you than around you”
– Learn to explain to investors etc.
• File as soon as possible after validation
of business model
– Balance risks
• Abandon IP that no longer aligns with
business model
• Understand IP protection is process,
not an event
– Become IP strategist or integrate
one onto team
Copyright 2015

17. QUESTIONS?
Jackie@TheHutterGroup.com
http://ipassetmaximizerblog.com7
770.580.0360
Copyright: The Hutter Group 2015