IP: Your Super Secret Weapon Against the Evil Competition

Transcript

1. What you need to know about intellectual property (IP) for your start‐up Sean Solberg Davis Brown Law Firm Justin Porter University of Minnesota Copyright 2012
2. 4/7/2012 2
3. Ground Rules • Contrary to most presentations – please turn on laptops and smartphones • Please participate with polls • Twitter #ipminnebar with questions / comments • Please participate in person • Ask specific questions at the end 4/7/2012 3 Twitter #ipminnebar
4. Agenda • Intellectual Property (IP) • Start‐up IP Strategy • Seismic Shift in Patent Law 4/7/2012 4 Twitter #ipminnebar
5. INTELLECTUAL PROPERTY (IP) 4/7/2012 6 Twitter #ipminnebar
6. IP 101 ‐ 5 Categories of Rights Type of Right Scope of Coverage Example Direct Cost Patents Inventions/ideas – products, processes Telephone $$$$ Trade Secrets Confidential information Strategies, lists $ Trademarks Symbols, names, images and designs used in commerce Coca‐Cola® $$ Copyrights Literary, artistic works, software and drawings Movies, books $$ Agreements Fills gaps Confidentiality agreements, licenses $$$ 4/7/2012 7 Twitter #ipminnebar
7. What is a Patent? • A patent is a right granted by the U.S. Government for new, unobvious and useful inventions • The right to exclude others from making, using, offering for sale, selling or importing the invention • The rights conferred under a patent are limited in time 4/7/2012 8 Twitter #ipminnebar
8. Types of Patents • Plant patents – protects any new and distinct variety of plant that has been invented or discovered and asexually reproduced – Term: 20 years from the date the application is filed • Utility patents – protects utility of articles – Term: 20 years from the date the application is filed • Design patents – protects ornamental appearance of an article – Term: 14 years from the grant date 4/7/2012 10 Twitter #ipminnebar
9. Patent Components • Front Page – Patent No. – Title – Inventors – Filing Date – Abstract • Drawings • Background • Description of Drawings • Detailed Description • Claims 4/7/2012 11 The invention is defined by the claims Twitter #ipminnebar
10. Claims • Scope of the invention is determined by the breadth of the claims • Include a list of elements or steps • Written as a single sentence 4/7/2012 12 Twitter #ipminnebar
11. PATENT 4/7/2012 Twitter #ipminnebar 13
12. Patentability vs. Freedom‐to‐Operate Jetpack • Jetpack Claim – A device for human flight comprising: (a) an attachment mechanism configured to be coupled to a user, and (b) a propulsion system coupled to the attachment mechanism. 4/7/2012 Twitter #ipminnebar 14
13. Patentability vs. Freedom‐to‐Operate Jetpack 4/7/2012 Twitter #ipminnebar 15 New Jetpack • New Jetpack Claim – A device for human flight comprising: (a) an attachment mechanism configured to be coupled to a user, (b) a propulsion system coupled to the attachment mechanism, and (c) a wing component coupled to the propulsion system.
14. Process of Pursuing a Patent 1. File Application – Non‐provisional or provisional application 2. File Information Disclosure Statement (“IDS”) – disclosure of all known prior art 3. Office Action – Patent Trademark Office issues a communication to the Applicant – Usually within 2‐4 years of filing – Claims will be rejected based on prior art or formalities 4. Response ‐ Applicant will work with a patent attorney to formulate a response to the claim rejections – Can amend claims and/or argue against the rejections – Arguments ‐ mixture of legal and technology‐based 5. Further Office Actions and Responses – 1, 2, 3, 4 or more times 6. Notice of Allowance – Examiner recognizes one or more of the claims as allowed 7. Issuance – Patent issues after Applicant pays issue fee 8. Pay Maintenance Fees 4/7/2012 16 Twitter #ipminnebar
15. Patent Searching • Google Patents (google.com/patents) – Does not include all patents – Google does not update frequently • US Patent Office (uspto.gov) – Not very user friendly but issued patents and published patent applications can be searched • European Patent Office (ep.espacenet.com) – Provides US and foreign patents 4/7/2012 17 Twitter #ipminnebar
16. Trade Secret • Confidential information – Protects ideas, methods, and other information • Elements – Derives economic value or provide a competitive advantage – Not generally known to others – Steps are taken to maintain secrecy • Examples – Formula for Coca‐Cola – Manufacturing processes 4/7/2012 19 Twitter #ipminnebar
17. Trademark • Word, name, symbol or device • Used in commerce to identify the source of goods (or services) – Words – Colors (e.g. pink for Owens Corning building insulation) – Shape of product (e.g. the Coke bottle) – Sounds / smells – Animated characters 4/7/2012 20 Twitter #ipminnebar
18. Copyright • Set of rights in an original work of authorship – Fixed in a tangible medium of expression • Protects expression and not idea • No special action required to obtain copyright • Protects against unauthorized copying – Does not protect against independent development 4/7/2012 Twitter #ipminnebar 21
19. IP Agreements • License Agreements (especially patent licenses) – Patent License – an agreement by the patent holder (Licensor) to waive its right to sue the Licensee for conduct which, absent the license, would be actionable as patent infringement – In exchange, the Licensee generally agrees to pay money to the Licensor in the form of – Upfront license fees – Royalties on sales revenue – Milestone payments – Sublicensing fees – Etc… • Employment Agreements • Joint Development Agreements • Confidentiality Agreements 4/7/2012 22 Twitter #ipminnebar
20. STARTUP IP STRATEGY 4/7/2012 Twitter #ipminnebar 23
21. Start‐up IP Strategy 1. Evaluate Technology and IP 2. Assess IP Landscape and Competitors 3. Maximize IP Protection 4. Refine IP Strategy over Time 4/7/2012 25 Twitter #ipminnebar
22. 1. Evaluate Technology and IP • Is this technology worth patenting? • Would sale or licensing out of technology be better? • Are trade secrets a better approach? • Is it necessary to license‐in additional rights? • How does need for funding relate to these considerations? 4/7/2012 26 Twitter #ipminnebar
23. 2. Assess IP Landscape and Competitors • Identify competitors – market competitors and IP competitors • Patent mapping/landscape • Blocking patents – patents that prevent you from making, using, or selling your product • Freedom to operate (FTO) (“right‐to‐use”) opinions – litigation risk analysis – Patentability vs. Freedom to Operate: Must determine whether you can play in this space – Note that FTO issues are usually the focus of Venture Capital IP due diligence on an emerging company 4/7/2012 27 Twitter #ipminnebar Know the competition’s IP portfolio as well as you know their business
24. 3. Maximize IP Protection Defensive Patents Offensive Patents Combination Patents Protect what your company is doing or wants to do Protect what others might do to get around your Company Partnering Trade bait Most companies stop here Leading companies implement these IP strategies 4/7/2012 28 Twitter #ipminnebar
25. 3. Maximize IP Protection (cont.) • Pursuing Patents/Claims That Add Value • Three Basic Characteristics – Likelihood of use by others – Ease of detecting infringement – Difficult to design around 4/7/2012 Twitter #ipminnebar 29
26. 3. Maximize IP Protection (cont.) 4/7/2012 Twitter #ipminnebar 30 Position of Blade Triple-Blade Unobstructed Rinsing Region Chemical Coatings Shaving Strips Razor Head Metallic Covered Plastic Ejector System Spring Biased Plunger Razor Handle Pivot Support Structure Pivot B/T Head and Handle Razor Patent continuation practice creates patent expansion opportunities and business space
27. 4. Refine IP Strategy over Time • IP strategy vs. funding = catch 22? – To protect your technology and reduce risk of patent infringement – you first need $$$ – To get $$$ – you first need to protect your technology and reduce risk of patent infringement • Think about your target – Investors – Investors ‐ freedom to operate as important or more important than patent applications/patent portfolio – Venture capitalists (VCs) rarely sign confidentiality agreements • IP on a Budget – Provisional application – Preliminary freedom to operate (FTO) analysis 4/7/2012 31 Twitter #ipminnebar
28. SEISMIC SHIFT IN PATENT LAW 4/7/2012 32 Twitter #ipminnebar
29. Patent Reform Act – First to File • Old Law – First to Invent – First inventor wins, regardless of who filed first – First inventor must be able to prove prior invention – Interference Proceeding ‐ evidentiary battle • New Law – First to File – First inventor/applicant to file application wins, regardless of who invented first – Priority date governed by effective filing date rather than date of underlying invention – Eliminates interference proceedings • Replaced with derivation proceedings 4/7/2012 33 Twitter #ipminnebar
30. Summary • Start with the end goal in mind • It may be important to protect your IP with a patent, trademark, copyright, or as a trade secret • It can cost a fair amount to protect your IP, so evaluate the start‐up opportunity and assess the value that the IP will provide • One major change with patent reform is the shift to first to file 4/7/2012 34 Twitter #ipminnebar
31. Sean Solberg seansolberg@davisbrownlaw.com 612.802.3990 Justin Porter juporter@umn.edu 612.600.1635 Thanks 4/7/2012 36 Twitter #ipminnebar