ip strategies for startups

IP Strategies for startupsAGRAWAL LAW FIRM, LLC

8333 OLIVE BOULEVARD

ST. LOUIS, MISSOURI 63132

314-994-7604

© 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.

AGRAWAL LAW FIRM

• WHAT IS INTELLECTUAL PROPERTY?• TRADEMARKS• COPYRIGHTS• TRADE-SECRETS• PATENTS


AGRAWAL LAW FIRMOVERVIEW - TRADEMARK • A TRADEMARK IS ANY WORD, NAME, SYMBOL

USED BY MANUFACTURERS OR MERCHANTS TO IDENTIFY THEIR GOODS OR SERVICES IN ORDER TO DISTINGUISHTHEM FROM OTHERS.

• TRADEMARKS CAN ALSO BE SLOGANS, SHAPES AND COLORS.

• EVEN FRAGRANCES MAY QUALIFY FOR TRADEMARK PROTECTION.


AGRAWAL LAW FIRMOVERVIEW - COPYRIGHT

• COPYRIGHT IS THE EXCLUSIVE RIGHT TO COPY A WORK. IT IS NOT LIMITED TO THE IDEA ITSELF BUT THE EXPRESSION OF THE IDEA.

• DOES NOT PROTECT THE IDEA, PROCEDURE, PROCESS, METHOD OR CONCEPT.

• PROTECTS THE IDEA THAT IS EXPRESSED.

• A COPYRIGHT EXISTS THE MOMENT IT IS CREATED, WHICH IS WHEN THE WORK IS FIXED FOR THE FIRST TIME IN A TANGIBLE MEDIUM OF EXPRESSION


• A trade secret may consist of any formula, pattern, physical device, idea, process or compilation of information that:• provides a competitive advantage in the

marketplace, and• is kept secret to prevent the public or

competitors from learning about it, absent improper acquisition or theft.

THE AGRAWAL LAW FIRMOVERVIEW- TRADE SECRET


AGRAWAL LAW FIRMOVERVIEW - PATENTS

• A PATENT IS A NEGATIVE RIGHT.

• THE OWNER OF AN ISSUED PATENT CAN PREVENT OTHERS FROM:• MAKING• USING• SELLING• LICENSING

TECHNOLOGY DESCRIBED AND CLAIMED IN THE PATENT


THE AGRAWAL LAW FIRM

PATENTS


AGRAWAL LAW FIRMPATENTS

• A PATENT IS A NEGATIVE RIGHT.

• THE OWNER OF AN ISSUED PATENT CAN PREVENT OTHERS FROM:• MAKING• USING• SELLING• LICENSINGTHE TECHNOLOGY DESCRIBED AND CLAIMED

IN THE PATENT



• WHAT CAN YOU PROTECT WITH A PATENT?• INVENTIONS• NEW TECHNOLOGY• ORNAMENTAL DESIGNS• ASEXUALLY REPRODUCED PLANTS

• WHEN SHOULD YOU FILE A PATENT APPLICATION?• AS SOON AS POSSIBLE BECAUSE OF PRIOR ART



What are the Requirements of a Patent• The invention has to be New, Useful and Unobvious• New

• novel, not disclosed to anyone• No publications to be eligible for a global patent

• Useful• Perform a useful task.• Most all inventions are useful; have to watch for

business method patents make sure tied to computer

• Unobvious• No other patent or invention performs the same

function in exactly the same way



Parts of a Patent• SPECIFICATION

• BACKGROUND THAT DESCRIBES A PROBLEM TO BE SOLVED

• DESCRIPTION OF THE INVENTION AND HOW IT SOLVES THE PROBLEM

• INCLUDES ANY DRAWINGS

• CLAIMS• DESCRIBE YOUR INVENTION• PROVIDE LEGAL SUPPORT FOR YOUR

INVENTION© 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.


What is necessary to file a Patent?

• A prior art Search is Required• What is prior art?

• all information that has been made available to the public in any form before the date a provisional patent or utility patent is filed, which may be relevant to a patent's claims of novelty.

• If an invention has been described in prior art, a patent on that invention is not valid.

• Do a Google search, patent search, literature search

• Draft a provisional or Utility Patent application• File Provisional patent with a single claim OR• File a Utility patent with a set of claims

• File and pay the governmental fees© 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.

http://en.wikipedia.org/wiki/Information

http://en.wikipedia.org/wiki/Invention

AGRAWAL LAW FIRMPaTENT SEARCH

• PATENT SEARCHING• Use multiple databases to search for prior art • What is PRIOR ART?

• All information that is made available publically before the patent application’s priority date that is relevant to the claimed invention

• Databases• Google Patents www.google.com/patents• EPO Databasehttp://ep.espacenet.com• USPTO www.uspto.gov• India http://www.patentoffice.nic.in/


http://www.google.com/patents

http://ep.espacenet.com/

http://www.uspto.gov/

http://www.patentoffice.nic.in/

AGRAWAL LAW FIRMPATENTS -

INVENTORSHIP• WHY IS INVENTORSHIP IMPORTANT?

• All inventors named on a patent own the patent equally

• Any inventor can license the patent to a third-party without a co-inventor’s permission

• Improper inventorship can invalidate a patent


AGRAWAL LAW FIRMPATENTS - INVENTORSHIP• Patent Inventorship vs. Author of Peer Journal

Paper• Not the same• Inventorship on a patent is based on conception• Inventorship requires that at least ONE claim in

the patent be attributed to an inventor

• Inventors do not need to physically work together

• They do not need to make Equal contributions

• So they do not need to contribute to each claim © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.

AGRAWAL LAW FIRMPATENTS -

INVENTORSHIP• KEY TO INVENTORSHIP IS CONCEPTION

• Conception is when the idea of the invention, including every feature is known AND

• When someone with ordinary skill could construct the apparatus, perform the process without undue experimentation

• Proof is provided by using laboratory notebooks

• INVENTORSHIP IS NOT• One suggests an idea• One follows instructions• One consults on the project after conception• One acts as salesman showing how product may be used



• CAN I FILE A PATENT APPLICATION AT ANY TIME? NO

• YOU MUST FILE BEFORE A DISCLOSURE IS MADE.

• IN US YOU HAVE A ONE YEAR GRACE PERIOD TO FILE A PATENT APPLICATION

• FILE A PROVISIONAL PATENT TO BUY TIME


AGRAWAL LAW FIRMNDA

• If you disclose your invention before filing a patent application you can lose your right to have a patent• Most Countries require absolute novelty

• Can’t disclose• Can’t sell product• Can’t offer for sale• Can’t advertize

• SOLUTION IS THE NON-DISCLOSURE AGREEMENT

• TYPES OF NDAs


AGRAWAL LAW FIRMPATENTS – ON SALE

BAR• Most countries require absolute novelty

• Precludes selling or offering a product for sale prior to filing a patent application

• US has an exception

• Can file a patent WITHIN ONE YEAR AFTER First sale of the invention

• After ONE year the patent application is barred.


AGRAWAL LAW FIRMPATENTS - PROVISIONAL• Does INDIA have PROVISIONAL PATENT?

• India does not have provisional patents per se• But you can refile within ONE YEAR

• ADVANTAGES:• Provides Early Priority Date, used in foreign filing• Place “Patent Pending” on product• Allows time for additional research & to test the market• Low cost• Allows for public disclosure AFTER filing

• Useful for filing before Professors give presentations on research

• Improvements may be added to subsequent Utility Patent


AGRAWAL LAW FIRMPATENTS - PROVISIONAL• DISADVANTAGES

• Improvements later added to utility patent may not receive same priority filing date• Cannot update Provisional

• MUST convert into a UTLITY patent application within ONE year or lose benefit of priority date

• MUST also file PCT within one year• Otherwise is abandoned

• Lose one year of potential examination by patent office• May not sufficiently describe the invention

• Must include point of novelty• Must include ONE claim for EU priority purposes

• May invalidate your patent

© Agrawal Law Firm, 2010. All Rights Reserved.

AGRAWAL LAW FIRMPATENTS - PROVISIONAL• STRATEGIC USES

• The US is a first to invent country• Has date of invention• “Effective filing date” -- when the patent

application was filed in the US

• File US provisional application when file Indian Patent Application

• This Creates an invention date in the US under §102(b)• Your Patent application is then prior art for US

inventors


AGRAWAL LAW FIRM

Provisional Filing

Utility Filing

PCT Filing

Month 0

File patents in countries

Patent Publication

Month 12 Month 18

Upto 31 month

Patent Issues

Upto 5 years from when filed


AGRAWAL LAW FIRMPATENTS - PCT

What is a PCT?

• PCT stands for Patent Cooperation Treaty• TREATY SIGNED BY 142 COUNTRIES• A METHOD TO FILING INTERNATIONAL PATENTS• HAS VERY STRICT TIMELINES

• FACTS• 50% of all foreign cases filed are through PCT• PCT buys you time• Get an international Search and Written Opinion

and optionally International Examination



• ADVANTAGES• File a single patent application instead of series

of national patent applications• Provides acceptance of priority date• Less expensive• Allows time delay to file patent applications in

foreign countries• Can delay costs upto 30 months



• DISADVANTAGES• Does not provide patent protection• Does not Issue an international patent• IT IS A FILING SYSTEM

• STRATEGY• You must file the PCT in India• Select the US or the EPO as the searching

authority• You won’t have to pay the search fee again• Supplementary Search – expensive, use for

commercially viable applications. Ask is it worth the expense. © 2010 AGRAWAL LAW FIRM, LLC. ALL RIGHTS RESERVED.

AGRAWAL LAW FIRMPATENTS - Claims

• NUTS & BOLTS

• A Patent only provides protection based on what is stated in the claims

• You want broad claims - Why?



• Broad Claims lead to more protection

• Protection around your house. The farther the fence is away from the house, the more area it protects.



• CLAIM 1:

• An apparatus, comprising: a first blade having a first sharpened edge and a handle with a hole to fit the thumb, a second blade having a second sharpened edge and a handle with a hole to fit a finger, wherein the handles are used to opearate the first sharpended edge and the second sharpeneded edge in opposite directions pivot manner to cut a plurality of materials such as paper, cardboard, metal foil, plastic, cloth, rope, and wire.



• CLAIM 2: An apparatus comprising: a plurality of metal blades, each having at least one sharpened edge, wherein the sharpened edges operate to slide against one another to cut a material.



• METHOD vs. APPARATUS CLAIMS

• HINT – Keep the two types of claims separate

• E.g., A method for measuring the heart rate, comprising:

• E.g., An apparatus for measuring the heart rate, comprising:

• NOT A method and apparatus for measuring the heart rate, comprising:


AGRAWAL LAW FIRMPATENTS – BEST MODE

• BEST MODE is not required in most countries• It is not required in EU or India• REQUIRED IN USA. Requires the inventor

disclose make a full disclosure and provide the “best” embodiment for the invention.

• If not provided can invalidate a US patent.• Must show(1) the inventor possessed a best

mode at the time of filing; and (2) the written description fails to disclose the best mode in a way to allow one reasonably skilled in the art to practice that mode.


AGRAWAL LAW FIRMPATENTS – BEST MODE

• Best Mode must be disclosed at time of filing patent application

• Does not have to be updated

• Do not have to provide manufacturing or production specifications

• One does not have to specify in the patent that this is the best mode

• Defects in Best Mode can be corrected by filing an amendment to the specification (New Matter)


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