This presentation lays out basic information and topics for early stage start-ups to consider concerning intellectual property, such as patents, trademarks, and copyrights. For more information and resources, visit www.suiter.com.
Matt Poulsen is a patent attorney and co-owner of Suiter Swantz IP.
He represents clients including large Fortune 500 companies, universities, start-up companies and individual inventors. His practice is generally focused on IP procurement and protection, including U. S. and foreign patent preparation and prosecution, patentability and freedom-to-operate analysis and various trademark, copyright and trade secret matters. Matt also advises clients with respect to various start-up related activities, such early-stage IP strategy.
Matt is admitted to the Nebraska Supreme Court and the U.S. District Court, District of Nebraska, and is registered to practice before the United States Patent and Trademark Office.
5. WHY DO COMPANIES GET
PATENTS?
Provides Limited Monopoly
Defensive Tool
Investors Prefer Them
Makes Acquisition Easier
6. STATISTICS
80% of a company’s value is in intangible assets
40% of startups hold patents and 80% of startups
receiving venture capital hold patents
On average tech startups receive $535,000 more in
investment per patent
Startups with patents are 35 times more likely to
experience “high growth”
Correlation or causation?
Business tool not a magic bullet/shield
7. GENERAL COST INFORMATION
Patent:
$10-20k (spread over 2-3 years)
Trademark:
$1000-2000 (spread over 1-2 years)
Copyright:
$200-500
8. Protects: Any new, useful and non-obvious
machine, process, article of manufacture or
composition of matter
Types: utility, design, and plant
Limited Term (20 years utility/15 years design)
Inventors are presumptive owners of patent so
get assignments!
PATENTS DEFINED
9. WHAT IS A PATENT…REALLY?
1. A method of controlling an electronic device with a
touch-sensitive display, comprising:
detecting contact with the touch-sensitive display while
the device is in a user-interface lock state;
moving an unlock image along a predefined displayed
path on the touch-sensitive display in accordance
with the contact, wherein the unlock image is a
graphical, interactive user-interface object with which
a user interacts in order to unlock the device;
transitioning the device to a user-interface unlock state
if the detected contact corresponds to a predefined
gesture; and
maintaining the device in the user-interface lock state if
the detected contact does not correspond to the
predefined gesture.
10. Is innovation eligible for patent protection?
Is innovation patentable?
Self-barring events (public disclosure, use, sale)
Where do you need protection?
Are you infringing on someone else’s patent?
BASIC QUESTIONS
12. POTENTIAL SELF-BARRING
EVENTS
Public Disclosure
Website
Pitches (if public)
Conferences
Grant Applications (in some cases)
Public Use
Public use doesn’t mean “publicly known”
Offer for Sale
*U.S. theoretically has a 1-year grace period
(many countries do not)
13. PROVISIONAL PATENT
APPLICATION
Allows for “bootstrapping”
Can quickly avoid barring event
Cheaper and less formal than non-provisional
patent application
Can file multiple PPAs (helps with “pivoting”)
Non-provisional must be filed within 1 year of
earliest PPA
14. FOREIGN FILING
Is foreign filing needed?
Must be filed within 1 year of earliest filing date
Multiple options:
PCT provides a placeholder option (“international
app”)
Filing direct into selected country via Paris
Convention
Patent applications are prosecuted in each
individual country
15. PATENT PROCESS
PATENT
SEARCH
FILE PPA(s)
FILE NPA W/IN
1 YEAR OF PPA
FILE PCT W/ IN
1 YEAR OF PPA
FILE NATIONAL
STAGE W/IN 30
MOS. OF PPA
PROSECUTE IN
INDIVIDUAL
COUNTRIES
DISCLOSURE
16. PATENT TAKEAWAYS
Have a plan before public disclosure
Do you need a patent? Where? When?
Search to determine if innovation is “patentable”
before filing (see Google Patents)
Use PPA(s) to bootstrap IP protection
IP provisions in all employment/contractor
agreements
Be aware of patents owned by others
18. TRADEMARKS DEFINED
Protects: Any artifice indicating the source of a
good or service
Federal and Common Law trademarks
Must show “use in commerce” and must be tied
to commercial activity
“Use in Commerce” establishes priority
Can file federal TM application as “in use” or as
“intent to use”
No barring events
19. BASIC QUESTIONS
Are you using the mark?
Strength of the mark?
Fanciful marks – good
Generic marks - bad
Are there prior similar marks:
http://tmsearch.uspto.gov/
Likelihood of Confusion?
21. COPYRIGHTS DEFINED
Protects: Any original work of authorship fixed in
a tangible medium of expression
Copyright protection is automatic and
registration is not required
Register valuable copyrightable material
relevant to business
Prior to infringement or w/in 3 mos. of publication
Registered copyrights provide certain
advantages in federal court
22. BASIC QUESTIONS
Is copyright protection appropriate?
Is the work worth registering?
When was work published?
Is there any known infringement?
Statutory damages may be available
Is a work-for-hire agreement needed?
23. TRADE SECRETS
Reasonable efforts to keep information
secret
Must hold independent economic value
because it is secret
Does not expire
Does not protect against reverse
engineering
Federal Trade Secrets Act of 2016