Patents Primer - Filing patents in starups
Download as PPTX, PDF0 likes1,032 views
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.
Patents Primer - Filing patents in starups
- 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