patents primer - filing patents in starups
DESCRIPTION
This is a presentation I gave at Freelancer.com. It is a quick introduction to the principles of patent law and analyses the various components of a patent. Finally, I discus patent strategy in the context of a startup.TRANSCRIPT
PATENTS PRIMER Patenting and IP Strategy for Startups
Dino Talic – 9 Dec 2011
Freelancer.com
Disclaimer
This does not constitute legal advice. Just a quick intro to the basic concepts.
Forms of Intellectual PropertyIn
dust
rial P
rope
rty Design
Patent
Trademark
Trade Secret
Cop
y-rig
ht Music, Art, etc
Term
Life + 70 years
14 years
20 years
10 years * X
∞
Forms of Intellectual PropertyIn
dust
rial P
rope
rty Design
Patent
Trademark
Trade Secret
Cop
y-rig
ht Music, Art, etc
Term
Life + 70 years
14 years
20 years
10 years * X
∞
This presentation
Patent• Exclusive monopoly in exchange for disclosure of
invention
Disclosure
Time-limited Monopoly
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
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
What can Typically be Patented
General Concept
Specific Product
Not valuable
Not patentable, not enforceable
Invention
Valuable Patent
• Enforceable – obvious when a competitor is using patent and it will succeed in court
• Not easily avoidable – no obvious alternatives
Lifecycle of a patent
Filing of Patent Application
Formal Examination
Publication of
Application
Search and Substantive Examination
Grant and Publication
Opposition Proceedings
Lifecycle of a patent
Filing of Patent Application
Formal Examination
Publication of
Application
Search and Substantive Examination
Grant and Publication
Opposition Proceedings
Engineering involvement
• Prior art search• Patent Application draft• Claim drafting (with aid
of IP lawyer!)
Lifecycle of a patent
Filing of Patent Application
Formal Examination
Publication of
Application
Search and Substantive Examination
Grant and Publication
Opposition Proceedings
Engineering involvement
• Response to Office Actions
Lifecycle of a patent
Filing of Patent Application
Formal Examination
Publication of
Application
Search and Substantive Examination
Grant and Publication
Opposition Proceedings
Engineering involvement
• Expert witness in litigation
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
Anatomy of a Patent
Title
Inventors
Assignee (Owner)
Patent #
Priority Date
Date granted
Relevant Prior Art
Abstract
Anatomy of a Patent
Anatomy of a Patent
Anatomy of a Patent – Detailed Description
Anatomy of a Patent - Claims
Reasons to file a Patent• Protect competitive advantage - prevent competitors from
using our inventive technology
• Prevent competitors from patenting similar technology
• Generate licensing revenue
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
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.
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
Reasons a Startup should file a Patent
• Increase leverage over a partner
• Deter a patent lawsuit
• Increase attractiveness for investment or acquisition
Why does Freelancer care?• Our competitors have patents
• We are worth suing
• Raising capital or selling company is difficult without IP
• Deter trolls
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!
Controversies• Particularly for software patents
• Non-tangible – should they be patentable:• US says YES• EU says NO
• Patent trolls – Intellectual Ventures
Further Reading
• Inventing the Future – An Introduction to Patents
• Patent Absurdity: How Software Patents broke the System
http://www.wipo.int/freepublications/en/sme/917/wipo_pub_917.pdf
http://patentabsurdity.com/
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