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

What is a Patent? Form of intellectual propertyForm of intellectual property Exclusive rights granted to an inventor for a limited time in exchange for the public disclosure of an invention.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 1.Novel 2.Useful 3.Non Obvious

Why? Gain perception of prestige, exclusivityGain perception of prestige, exclusivity Attract VC and other financingAttract VC and other financing Increase bargain power in M&AIncrease bargain power in M&A First-to-file, first-to-inventFirst-to-file, first-to-invent Monopolize production and marketMonopolize production and market License to obtain royaltiesLicense to obtain royalties Sell patentsSell patents

How? Step 1: Search Step 2: Discuss with a Patent Attorney Step 3: File a provisional patent Step 4: File a Utility Patent within 1 year Step 5: Start production and selling before the patent runs out! Step 1: Search Step 2: Discuss with a Patent Attorney Step 3: File a provisional patent Step 4: File a Utility Patent within 1 year Step 5: Start production and selling before the patent runs out!

Provisional vs. Utility Provisional: Design incompleteDesign incomplete Early marketing stageEarly marketing stage Issuance delay acceptableIssuance delay acceptable Delay costsDelay costsProvisional: Design incompleteDesign incomplete Early marketing stageEarly marketing stage Issuance delay acceptableIssuance delay acceptable Delay costsDelay costs Utility: Developed productDeveloped product Known/Developed marketKnown/Developed market Prompt issuance desiredPrompt issuance desired Resources availableResources available Active InfringerActive Infringer

Timeline

Patent Strategy

For Patent Holders Provisional 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 landscapePatents are public documents: Obtain an overall view of competitive landscape “Box them in” – Design around patent“Box them in” – Design around patent

Obvious Find relevant prior art, invalidate a competitor’s patent in re-examination at USPTO, or in court proceedingFind 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 publicFollow 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 improvementMake a non-obvious improvement on the patent, and patent the improvement

Geographic Limitations Patent rights have geographic limitations: make/use/sell invention in other countriesPatent rights have geographic limitations: make/use/sell invention in other countries

The End