Class Instructional Material

1. Presented by:
Eric A. Hanscom
Managing Attorney
2141 Palomar Airport Road, Suite 320 Phone: (760) 651 0142
Carlsbad, CA 92011 Email: info@iciplaw.com
Website: www.iciplaw.com
Other Offices in Hong Kong and Bangkok

2. 35 U.S.C. §102: You have 1 year from the time
you first “publicly disclose” your invention
until you have to file for patent protection.

3. Patents Trademarks Copyrights Trade Secrets
• A right to exclude others • Any name, symbol, figure, • The legal right granted to • A formula, process, device,
from manufacturing, letter, word, or mark an author, composer, or item of information used
selling, or using your adopted and used by a playwright, publisher, or by a business that has
invention for a number of manufacturer or merchant distributor to exclusive economic value because it
years. in order to designate his or publication, production, is not generally known or
her goods or services and sale, or distribution of a easily discovered by
to distinguish them from literary, musical, dramatic, observation or examination
those manufactured or sold or artistic work. and for which reasonable
by others. efforts to maintain secrecy
have been made.

4.  A patent is a right to exclude others from
manufacturing, selling, or using your
invention for a number of years.
 Eg. The Apple iPod

5.  A trademark is any name, symbol, figure, letter, word, or mark
adopted and used by a manufacturer or merchant in order to
designate his or her goods and to distinguish them from those
manufactured or sold by others.
 Eg. iPod and
 “Trade Dress” - the overall image of a product used in its
marketing or sales that is composed of the nonfunctional
elements of its design, packaging, or labeling (as colors, package
shape, or symbols)
 NOTE: Trade dress is protected by the Trademark (Lanham) Act of 1946 if
it is not a functional part of the product, has acquired secondary
meaning, and there is likelihood of confusion as to the source of the
product on the part of the consumer if a competing product has a similar
trade dress.

6.  A copyright is the legal right granted to an
author, composer, playwright, publisher, or
distributor to exclusive publication,
production, sale, or distribution of a literary,
musical, dramatic, or artistic work.
 Eg. Harry Potter and the Sorcerer’s Stone

7.  Trade Secret - a formula, process, device, or
item of information used by a business that
has economic value because it is not
generally known or easily discovered by
observation or examination and for which
reasonable efforts to maintain secrecy have
been made.
 Eg. The formula of Coca-Cola

8. Type of Average time until Expect to pay
Length of Renew- Practical examples in
Intellectual Protects issue or final (attorney fees +
protection able? business
Property rejection? costs)*
20 years from
Devices, substances,
Patent (Utility) How something works 3 years $7,000 - 50,000 date of filing No
business methods.
application*
Patent 1 year grace period to file a 1 year "grace Devices, substances,
1 year $3,000 - $6,000 No
(Provisional) utility patent application period" business methods.
Patent (US 14 years from Unique shapes of
How something looks 1 year $2,000 No
Design) date of issue products
Patent Up to 25 years
Unique shapes of
(European How something looks 5 months $2,000 - $5,000 from date of No
products
Design) issue
Potentially
Name or logo related to Company names,
Trademark 10 months $1,000 - $5,000 Infinite w/ 10 Yes
business identity brand names, slogans.
year extensions
Websites, owner's
Life of author
Copyright Artistic creations 3 weeks $300 - $1,000 No manuals, packaging,
plus 70 years
advertising materials.
* Certain Exceptions Apply

9. • Venture Capitol
Investors • Hedge Funds
• Will want to see solid business plan including
IP strategy.
• Healthcare
• Environment
Government Grant •
•
Antiterrorism
Will want to see solid business plan including
IP strategy.
• Friends
FFF • Family
• Followers
You • Last choice

10. Legal Practical
Considerations Considerations
Protect your idea
Sell your idea
from theft
Barriers to
Finance your idea
protecting your idea

11. • You must invent or discover something new and useful
• Only the following subject matter can be patented:
• Processes (business methods)
Can A Patent • Manufactures (products)
Protect Your Idea?
• Compositions of matter (substances)
(35 U.S.C §101)
• Is there a patent, published paper (including published patent applications), or other public disclosure?
• Did it happen before your invention date or more than 1 year before the filing of the application?
Did Someone Else • This is true even if you had no knowledge of the other public disclosure
Beat You To It?
(35 U.S.C. §102)
• No patent if your invention is an “obvious improvement” over someone else’s public disclosure
• Usually the largest hurdle in obtaining a patent
Is Your Invention • This is true even if you had no knowledge of the other public disclosure
Truly Unique?
(35 U.S.C. §103)

12. Prior Art Search Analyze the Results
• Looks for issued • Should I apply for a utility
patents, published patent patent?
applications, and products on the • Business decision based upon
marketplace that are similar to prior art references found and
yours economic benefit of obtaining (or
• Everything cannot be found at least filing for) a patent
• Use a Prior Art Searching
company that ONLY does prior
art searches; Do NOT use
invention submission companies
who will give you a “package
deal” that includes a prior art
search and a patent application

13. File Application Allowance Issue
Office
File Application Response Allowance Issue
Action
Office Final Office
File Application Response Abandon
Action Action
Office Final Office
File Application Response Response Allowance Issue
Action Action
Office
File Application Response Allowance Issue
Action
File Continuation Office
Response Allowance Issue
Application Action

14. Issued
File Application Allowance
Patent
Renewal
Response
Fees (Utility
Rejection
/Office (written, pho Patents
Action ne call, visit only)
USPTO)

15. Background of Detailed
Abstract Drawings Claims
the Invention Description
• Summary of 150 • A simple • This section • This is the
words or Less introduction to describes section that
what your exactly how the protects your
invention is. invention works ideas
Describes the by referring to • It lays out the
general field of the drawings. individual
the invention, Describes in elements of
and sets up why detail why your your idea –
the prior art invention is not basically what
fails to solve the a mere “obvious you “claim” as
problem that improvement” your invention.
your invention over existing
fixes. patented
inventions.

16.  Abstract
 Drawings
 Background of the Invention
 Detailed Description
 Claims

19.  A simple introduction to what your invention
is

20.  This section describes exactly how the
invention works by referring to the drawings.

21.  This is the section that protects your ideas
 It lays out the individual elements of your
idea – basically what you “claim” as your
invention.

22. A Patent gives you’re the right to
A patent is good only in the country
exclude others from making, using,
where you have the patent.
or selling the invention.
4 Take-Away Items
you should
remember
To infringe a patent, you must To infringe a claim, you must infringe
infringe one claim of the patent. every element of the claim.

23. Your Invention
Patent 1: Narrow Claims Patent 2: Broad Claims
• A Laptop that
includes Claim 1: A Laptop
A Scanner A Scanner
Comprising
• A Scanner
• A Copier
• A Fax Claim 2: A Laptop
A Copier A Copier
Comprising
• A Printer Claim 1: A Laptop
Comprising
Claim 3: A Laptop
A Fax A Fax
Comprising
Claim 4: A Laptop
A Printer A Printer
Comprising
The Competition
Throckmorton V. Cox, III: 12-year old
Francoise’s Computer Center: In the
Hing Wong: A Hong Kong company computer genius living in New York
U.S., he builds a laptop computer
importing into the U.S. a laptop who has customized his laptop to
that contains a fax. He does not sell
computer with a photocopier and a contain a scanner, fax, printer, and
it in the U.S., but rather exports all of
scanner built into it. cell phone. He made it himself, and
the laptops to France.
has never sold it to anyone.

24. He is a Chilean
businessman
who makes
laptops in
China.
What
about
Felipe
Santiago?
He ships the These laptops
laptops contain a fax,
directly from scanner,
China to printer, and
Germany. photocopier.

25. Presented by:
Eric A. Hanscom
Managing Attorney
2141 Palomar Airport Road, Suite 320 Phone: (760) 651 0142
Carlsbad, CA 92011 Email: info@iciplaw.com
Website: www.iciplaw.com
Other Offices in Hong Kong and Bangkok

26. Trademarks
(Products)
Trademarks
(45 Classes)
Servicemarks
(Services)

27. Business Name, Logo Preliminary
Considerations
Slogan, Logo Is my name unique enough to
get a trademark? (The more
fanciful the better. Nike, Xerox
v. San Diego Legal Services.
Colorful logos, tag lines,
Product Name slogans are all good.
Should I pay for a trademark
Color, Sound, Shape search?

28. File Allowance Publication Opposition
Application
Office
Response
Trademark First renewal fees
Action Issues are due between
years 5 and 6
Subsequent
renewal fess are
due every 10 years

29. Foreign Patents must be filed:
• 40 – 50% of •Directly in the foreign country
USA world’s market •Buy yourself time with a Patent
for many goods Cooperation Treaty (PCT) filing
Key Countries
Other • Europe, Japan,
Buyers Australia, Canada
Foreign Trademarks can be
filed:
• China / Hong •Directly in the foreign country
Manufactur- Kong, Taiwan, •En masse through the Madrid Protocol
ing Sites South Korea,
Vietnam, Thailand
Defensive
Patents / • China
Trademarks Key Factors:
•Number of People in the Country
•Average Income per Person
•Geographic and/or Cultural Factors: Will
they buy your product?
Shipping • Hong Kong, •Enforcement of Intellectual Property:
Ports Will that country enforce your IP?
Singapore

30.  Foreign Patents must be filed:
 Directly in the foreign country; or
 Buy yourself time with a Paris Convention (PCT)
filing
 Foreign Trademarks can be filed:
 Directly in the foreign country; or
 En masse through the Madrid Protocol.

31.  Key Factors:
 Number of People in the Country
 Average Income per Person
 Geographic and/or Cultural Factors
 Enforcement of Intellectual Property

32.  Key Countries:
 USA
 40 – 50% of world’s market for many goods
 Other Buyers
 Europe, Japan, Australia, Canada
 Manufacturing Sites
 China / Hong Kong, Taiwan, South Korea, Vietnam,
Thailand
 Defensive Patents / Trademarks: China
 Shipping Ports: Hong Kong, Singapore

33. What should • Websites (before and after putting on-
line)
inventors • Brochures and other Advertising
Materials
consider • Packaging
copyrighting? • Owner’s Manuals
• Loser usually has to pay some attorney’s
fees and court costs
Copyright • Statutory Damages of up to $150,000 per
infringement for knowing and willful
Lawsuits infringement.

34. Winners Losers
Too Scattered / Wait Too
Good Luck (1/3)
Long
Spend Too Much / Too
Little Money on IP
Tenacity (1/3)
Do-it-yourselfers
Good Invention (1/3)

35. Is it a business or a hobby? Business are created to make money,
hobbies are for fun. If your invention is just a hobby, sure, try to
do it yourself, but don’t expect to succeed.
Mistakes made with IP applications are often not “discovered” until years after filing, and
you may lose potential patent and trademark rights during this time.
A solid IP strategy is essential for attracting investors. Seasoned investors
will look carefully at your patent, trademark and copyright applications
before they invest in your invention, so why not do it right the first time?
As the inventor, what is a good use of your time? Successful inventors
focus on what they do best and hire professionals for the rest.

36. “There are two types of inventors: the paranoid, and the more paranoid”
• Ron Reardon, President, National Association of Patent Practitioners (NAPP), NAPP
Conference, 2009.
Common Concern: “The
Chinese will steal my idea so I
won’t use them for prototypes
Never tell your idea to anyone “There are 3 things every
or production”
and die happily, but without successful inventor needs to
Fact: There is a security
having made any money off do: 1) trust some people, 2)
concern in overseas
your idea, because you kept take some chances, and 3)
manufacturing, but I have seen
your secret. spend some money”
much more “copying of
successful products” than
“stealing of ideas”.

37. Invention Promotion
Companies
“International” Trademark companies
Beware the “free ticket” to discuss your
patent (it is probably one way)

38. Presented by:
Eric A. Hanscom
Managing Attorney
2141 Palomar Airport Road, Suite 320 Phone: (760) 651 0142
Carlsbad, CA 92011 Email: info@iciplaw.com
Website: www.iciplaw.com
Other Offices in Hong Kong and Bangkok

39. Making / Selling it Yourself:
Find Your Target Audience
• Find a Factory, avoid front door
and back door theft issues.
• Warning to those who don’t like “selling”: you will
have to “sell” your invention to someone
• Transportation to Dock
• If no one will buy it, probably won’t make money • Shipping
• Warehouse in Long Beach
• Customs
Do Research
• Distribution
• Sales
• Trade Shows • Charge-backs
• Visit Local Stores
• Advertising
Create a Prototype? Theoretically not • Allowances
necessary to file a patent application, but • Defective Policies
practically, YES, you should have one. • Accounting
• U.S. • Unforeseen Circumstances
• Asia

40. License Assignment (Selling Your IP)
• License is a “rental” of your • Assignment is a sale
IP • “You give me $500,000, I’ll
• “You have the rights to make give you the patent.”
and sell products covered by • Less common than licensing
this patent in California for because the assignee is less
one year. I get $25,000 up likely to pay a decent price
front, and you pay me 3% of with an unproven invention,
gross sales per year. and once you have “proven”
• Considerations: the sales ability of the
• Exclusive or Non-exclusive invention, you probably don’t
• Territory want to sell it anyway.
• Royalties
• Accounting Period
• Audit Rights
• Ending, Renewal, and
Termination of the License

41. Prior Art Search -> Is it worth filing for a Utility Patent?
Yes -> Get “patent pending” (Utility or Provisional), then
try to sell or license.
No -> Will patent laws change? Worth a Hail Mary
application to get patent pending status for a few years?
In any case -> Would a Design Patent be useful?
In any case -> Trademarks and Copyrights.

42. Design, Manufacture, Deliver TM
Prototyping your Ideas
An overview of the first steps for commercializing your product idea
Leardon Solutions
PO Box 28564
San Diego, CA 92198-0564
www.leardon.com

43. Design Specialty Expected Time* Expected Cost*
Prototype Use for Prototype Detail Fabricator
Required Required
Design Fabrication Design Fabrication
Validation of idea
Proof-of-Concept Proof of feasibility 1-2 1-5
No No N/A $200-$2000
Prototype Use for obtaining IP months weeks
Show to investors for raising money
Show to investors for raising money
Work out the design and
manufacturing details
Integrated Design 1-3 3-5 $1000-
Validate functionality and qualify Probably Probably $1500-$3000
Prototype months weeks $2000
design
Feedback from distributors, buyers,
and retailers
Validate functionality and qualify
design
$3000-$15000
Production Feedback from distributors, buyers, 2-3 2-3 $2000- (includes
Yes Yes
Prototype and retailers months months $3000 production
tools)
Obtain customer feedback from beta
units
* Assumption is a 4 piece metal or plastic mechanical prototype. Certain exceptions apply .

44. Why Create a Prototype?
Validation of Idea/Proof of Feasibility: The proof-of-concept prototype bears little
resemblance to the actual product and should be used to prove the idea is valid and feasible.
Use for Obtaining IP: The proof-of-concept prototype or integrated design prototype can be
used in discussions with the patent attorneys to ensure proper communication of functionality.
Show to Investors for Raising Money: Use a high-quality prototype in an investor
presentation. There is no better investor pitch than one with a product demonstration.
Work out Design and Manufacturing Details: Design and engineer the product so
that it can be manufactured with quality results at the best price.
Validate Functionality and Qualify Design: Put integrated design prototype and
production prototype through rigorous qualification tests to verify product will operate properly
under all conditions.
Feedback from Distributors, Buyers, and Retailers: Take the integrated design
prototype and production prototype to targeted sales channels and receive valuable feedback
prior to freezing design.
Obtain Customer Feedback from Beta Units: Have customers find potential issues
and provide useful feedback by using the final production prototypes.

45. Examples of Proof-of-Concept Prototypes
Essential Tremors Eating Assistance
Beer Tap Lock
Ink-jet printer paper feed Booklet Folding Mechanism
Bicycle Shifting Plate Imaging Spot Lens
Medical Tourniquet Clinical Diagnostic Case
High-speed envelope printer
Biological Analysis Chip Holder
Eye/Ear Protection

46. Examples of Integrated Design Prototypes
Clinical Diagnostic Access Door Precision Spring
Clinical Diagnostic Case
Active Wear Exercise Belt Medical Diagnostic Equipment
Machined Body Panel
Imaging Spot Lens
Pet Food Bowl
Medical Tourniquet Medical Intubation Device
Bicycle Seat Clamps

47. Examples of Production Prototypes
Custom Bicycle Head-Tube Badges
Pet Food Bowl Grease Fitting
Medical Tourniquet
Acrylic Golf Putter
Logo Keychain
Inkjet Printer

48. How to Find a Competent Fabrication Vendor
 Outsourcing and Offshoring
 Outsourcing: subcontracting a process to a third-party company
 Offshoring: relocation of a business process from one country to
another
 Things to consider when offshoring
 Don’t underestimate the difficulty in offshoring a prototype
 Entrepreneurs typically don’t have the leverage or economics of scale
to approach off-shore manufacturers and get world-class pricing
 A thorough understanding of the culture and how to effectively
communicate with them are keys for successful offshoring
 Relationships are key to the successful of the offshoring project
 Don’t blindly search alibaba.com and globalsources.com for vendors

49. How do you make a Prototype?
 Stereolithography (SLA)
 A laser is used to cure liquid material and generate a part
 Parts are great for verifying form and fit but not usually function
 Takes about 3 days from release
 Cost ranges from $300 to $1000 for medium parts

50. How do you make a Prototype?
 Machining
 It is possible to machine most plastics and metals
 Turnaround times are around 1-3 weeks
 Produces parts that can be used to test form, fit, and function
 Part cost ranges from $150 for small parts and $6000 for large parts
Machined Parts Before Glueing Final Prototype
Assembly

51. How do you make a Prototype?
 Silicone Molding
 Take a machined plastic part and create a silicone mold for producing 15 parts
 Costs more than a tooled part but lead-time is much faster
 A set of 15 small parts will cost around $1500-$2500

52. Ryan A. Alexeev, Esq.
2141 Palomar Airport Rd., Ste. 320
Carlsbad, CA 92011
Tel: (619) 819-5085 / Fax: (619) 353-3401
www.NorthCountyLegal.com

53. Business Plan
Entity Formation
FBN

54. •Start Selling or •Purpose
Providing Your •Strengths
Services •Weaknesses
•Target Market
•Write Your Plan •Competitors
Down •Investment
•Obtain Trademarks
or Patents

55. •Sole Proprietorship
•Partnership
•Corporation
•LLC

56. Sole Proprietorship
• Can just start doing business – You and the business are one
• No need to file anything with the State
• Pay taxes under your own social security number
• You are personally liable
Partnership
• Two or more people going into business with each other
• No need to file anything with the state if you are operating as a general partnership
• Each person pays taxes on their own
• Each person is liable for the debts and you may be liable for your partner’s actions
General partners – manage the business and are equally liable for its debts
Limited partners – may invest but not be directly involved in management and are liable only
to the extent of their investments.
Limited Liability Partnership – Usually used by attorneys or accounting firms. Limits the
partner’s liability to the amount he/she invested in the company.

57. Corporations
• Business is separate entity from the owners
• Requires Articles of Incorporation to be filed with the Secretary of State
• Should have your by-laws which state how meetings should be held, when
they should be held
• Minimum franchise tax fee of $800 must be paid each year
• Must have an annual meeting and send in statement to the Secretary of State
every year stating you are in compliance
• The business is liable and not the individuals – Of course there are
exceptions to these rules
Limited Liability Corporation
• Owners and managers have limited liability
• For tax purposes
• 1 owner is taxed as sole proprietorship
• More than 1 owner is taxed as partnership
• May be owned by individuals or business entities
• Formation is simpler and faster than forming and maintaining a corporation
• Formal oral or written operating agreement must be entered into
• Minimum tax of $800/year
• Articles of Organization must be filed with Secretary of State

58.  File with County of San Diego
 San Diego El Cajon Kearney Mesa San Marcos
Chula Vista
 Do not use the publication services sent you
immediately