Patents

Yan Lee, Steven Boyce, Greg Wilson, Danil Zakirov, Ben Andrew

What is a Patent?

• Form of intellectual property

• Exclusive rights granted to an inventor for a limited time in exchange for the public disclosure of an invention.

Requirements

1. Novel

2. Useful

3. Non Obvious

Why?

• Gain perception of prestige, exclusivity

• Attract VC and other financing

• Increase bargain power in M&A

• First-to-file, first-to-invent• Monopolize production and

market• License to obtain royalties• Sell patents

How?Step 1:  Search  -www.google.com/patents/  -www.uspto.comStep 2:  Discuss with a Patent AttorneyStep 3:  File a provisional patentStep 4:  File a Utility Patent within 1 yearStep 5:  Start production and selling before the patent runs out!

Provisional vs. UtilityProvisional:

• Design incomplete• Early marketing stage• Issuance delay acceptable• Delay costs

Utility:

• Developed product• Known/Developed market• Prompt issuance desired• Resources available• Active Infringer

Timeline

Patent Strategy

For Patent HoldersProvisional Patent

• Can patent the product before making it• Need to provide complete idea, figures/pictures • “The key is complete, logical disclosure of the invention and alternatives” • One year patent term• Low cost – Fill it out online or pay a patent lawyer • Get help from getmentoring.com

• Enforce the patent rights to exclude from producing or selling the product or technology

• “Sue competitor for infringement”• “Obtain an injunction to shut down

competitor”• “Have competitor’s goods impounded by

Customs”• “Obtain lost profits from

competitor/infringer”• Allege infringement by a competitor • Continue to innovate, publish, and file

application

Example : Google purchased more than 1,000 patents from IBM

For Competitors

• Patents are public documents: Obtain an overall view of competitive landscape

• “Box them in” – Design around patent

Obvious

• Find relevant prior art, invalidate a competitor’s patent in re-examination at USPTO, or in court proceeding

Time Expired• Follow procedures/pay maintenance

fees to keep the patent in force: Expired/lapsed patent is dedicated to the public

Improve a Patent

• Make a non-obvious improvement on the patent, and patent the improvement

Geographic Limitations

• Patent rights have geographic limitations: make/use/sell invention in other countries

The End