patent/ip for enterpreneur

Patent/IP for EntrepreneurHSUANYEH CHANG, PHD, ESQ.

PATENT ATTORNEY & ATTORNEY AT LAWHSUANYEH LAW GROUP, PC

1© 2016 Hsuanyeh Law Group PC

“Business Is War, Patent Is Sword”

2

I am the best seller!

We protect the best seller!

© 2016 Hsuanyeh Law Group PC

Overview of Intellectual Property Rights (1/2)

Copyright (©) ◦ Protects original works of authorship

fixed in tangible medium of expression

Trademark (TM, SM, ®)◦ Protects marks that identify and

distinguish source of goods/services

Trade Secret◦ Protects secret information that derives

economic values from being misappropriated


Overview of Intellectual Property Rights (2/2)Patent – new and useful product and process

4

Android, allegedly infringingiPhone


Invalidated, Feb. 26, 2016

OutlineWhat is a Patent?

Why entrepreneur needs a Patent?

What can entrepreneur do with a Patent?

How to get a Patent?

Some Examples


What is a Patent?Patent is Disclosure◦ Quid Pro Quo (“this for that”) – In return to applicant’s disclosureof the invented new technology, the government grants applicant an exclusive right for a certain time period to prevent others from making and using the same invention

Patent is Personal Property◦ Inventorship (Conception/Creation) – Patent rights are granted to the inventors who first file (after AIA) an application

◦ Ownership (Possession) – Ownership of a patent is determined by contract. An inventor is presumed the owner but not necessarily true in all cases. Most employment contracts require employees to transfer patent ownership to their employer

Patent is Right to Exclude◦ Patent claims set forth the patent scope (“metes and bounds”)


Types of PatentUtility Patent (20 years from filing)◦ New and useful process, machine, manufacture, or composition of matter

Design Patent (15 years from issuance)◦ New, original, and ornamentaldesign for an article of manufacture

Plant Patent (20 years from filing)◦ Asexually reproduced new variety of plant


Why entrepreneur needs a Patent?Protect ideas – ideas worth nothing until some legal protections are obtained

Attract venture capital investment – although getting a patent does not guarantee venture investments, the inability to get one shows likelihood of failure

Increase company value – startups with patents are normally valued 20-‐50% higher than without a patent


What can entrepreneur do with a Patent?Legal barrier – Patents create a high barrier to prevent competitors from entering into the market

Licensing – Startups can earn income by entering into a patent licensing agreement with partners (e.g., B2B customers, OEM providers, etc.).

Business loan – Sometimes, startups can use patents as collateral to secure a business loan


How to get a Patent?File an application in the Patent Office

If the application is not granted outright, amend the application and/or argue with the Patent Office for patentability

Conditions of Patentability◦ Utility (Sec. 101) – new and useful, not an abstract idea◦ Novelty (Sec. 102) – not anticipated by prior art◦ Nonobviousness (Sec. 103) – not obvious to one of ordinary skill in the art at the time of invention/filing


Patent Application Process

11

Allow?

Provisional

Non-‐Provisional(12 months)

Publication(18 months)

Patent! J

Rejection Amendment and Response/RCE

Appeal

Foreign/PCT Appl.(12 months)

PCT National Stages(30 months)

Yes

No

Abandon L


Example 1: Bladeless Fan


Example 1: Prior Art

13

ò Originally filed Claim 1. A bladeless fan assembly for creating an air current, the fan assembly comprising:

ò a nozzle and a device creating an air flow through the nozzle, the nozzle comprising:

ò an interior passage,

ò a mouth for receiving the air flow from the interior passage, and

ò a Coanda surface located adjacent the mouth and over which the mouth is arranged to direct the air flow.

Prior Art –1981, Toshiba


Example 1: Patented ClaimUS Patent No. 8,308,445 (Issued November 13, 2012)

Patented Claim 1. A bladeless fan assembly for creating an air current, the fan assembly comprising: ◦ a nozzle, and a device creating an air flow through the nozzle, the nozzle comprising

◦ an interior passage, formed between a first wall and a second wall, wherein a distal end of the first wall overlaps a distal end of the second wall to form, near the distal ends of the first and second walls,

◦ a mouth for receiving the air flow from the interior passage, ◦ a tapered region, located downstream from the mouth, and ◦ an outlet, located downstream of the tapered region, for releasing the air flow from the nozzle,

wherein a distance between the first wall and the second wall is greater at the mouth than at the outlet, and

◦ a Coanda surface located adjacent the outlet, wherein the first wall is curved proximate to its distal end to direct the air flow over the Coanda surface, and wherein a thickness of the first wall decreases near the distal end, and a thickness of the second wall increases near the distal end.

Substantially narrowed in scope by adding the textual language in red.


Example 2: Thumb Drive


Example 2: Prior ArtExemplary Claim 1. A portable memory device, comprising:◦ a USB connector;◦ a flash memory module for storing data; and◦ a USB controller coupled between the USB connector and the flash memory module.

16

Prior Art -‐ 1

Prior Art -‐ 2


Example 2: Patented ClaimUSP 6,148,354 (Issued November 14, 2000)

Claim 1. A USB flash memory device for connecting to a USB-‐defined bus, the flash memory device comprising: ◦ (a) at least one flash memory module for storing data; ◦ (b) a USB connector for connecting to the USB-‐defined bus and for sending packets on, and for receiving packets from, the

USB-‐defined bus; ◦ (c) a USB controller for controlling said at least one flash memory module and for controlling said USB connector according to

at least one packet received from the USB-‐defined bus, such that data is written to and read from said at least one flash memory module;

◦ (d) an electrical interface for connecting to said USB connector and for receiving said packets from said USB connector as a plurality of electrical signals;

◦ (e) a logical interface for connecting to said electrical interface and for translating said plurality of electrical signals to logic signals, said logic signals being passed to said at least one flash memory module;

◦ (f) a functional interface for receiving said logic signals such that if said logic signals represent a USB functional packet, said functional interface sends a USB command to said USB controller according to said USB functional packet;

◦ (g) an application packet extractor for connecting to said logical interface and for receiving said logic signals, said application packet extractor extracting at least one packet from said logic signals; and

◦ (h) an application command interpreter for receiving said at least one packet and for determining a command according to said at least one packet, said command being passed to said USB controller.

Substantially narrowed in scope by adding the textual language in red.


Contact Information

Hsuanyeh Chang, PhD, Esq.

張宣業博士律師

Patent Attorney & Attorney-‐at-‐[email protected](617) 599-‐8282 (direct)www.hsuanyeh.com
