1. Jackie Hutter, MS, JD Jackie@TheHutterGroup.com
What Innovators Need to Know about IP Protection: A Business-Focused Approach
Jackie Hutter, MS, JD

2. My Perspective 20 years as IP professional
Law firm
Prosecution and counseling
Litigation
Corporation
Legal and innovation counsel
Last 8 years as “IP Strategist”
Put business issues before legal issues
“Validate your business, not just mine”
Truth telling, not risk mitigation
Research scientist/inventor
Insights from the trenches
Also an entrepreneur
I’ve made mistakes about lawyers, too
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3. Protectable IP? Must Understand What “IP” Means
Your Business’ Intangible Asset Value
Patentable Inventions
Trademarks
Brand Equity
Goodwill
Business Processes
Customer/
Suppliers
Employees
Others Specific to Business Model
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4. Is It Worth It to Protect Your IP?
IP is only relevant when you demonstrate that customers exist for what you want to sell
No reason to protect something that no one wants!
Must validate business model before thinking about IP protection
Customer discovery is key
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5. The Patent Protection Process
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6. Patent Types 1. Utility Patent:
Patents on inventions which function in a new way or to provide a new result
2. Design Patent:
Patents on the non-functional or ornamentation of something that already exists
3. Plant Patent:
Patents on types of plants that may be reproduced by grafts and cuttings
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7. U.S. Utility Patent Applications
provisional application
Allow filling without any formal patent claims, oath or declaration or any information disclosure statement
Less costly
No real protection
“Saves place in line”
non-provisional application
Contains at least a specification, all the drawing figures and at least one claim.
Goes through examination
Can be filed multiple times
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8. Where Can You Obtain a Patent?
USPTO
State Intellectual Property Office of China
Japan Patent Office…
National Patent Office
International patent application office
headquartered in Geneva, Switzerland
Still must apply nationally
WIPO
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9. US Utility Patent Application Process
Invention Identified and Vetted for Filing Expense
Application Drafted and Filed by Attorney
$5,000-$50,000
Application Published
18 months
Office Action
12-36 months
Response by Attorney
Amendment of Claims
$3000-$10,000
Final Rejection
Allowance
$1500
Maintenance Fees
3.5, 7.0, 11.5 Years
$900, $2300, $3800
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10. What Patents Are (and Aren’t)
Given by government for useful, new and unobvious inventions
Recognition that invention meets the legal requirements for patentability
Checklist of statutory obligations for both invention and way patent is written
Only market determines business value of invention
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11. Utility Patent Features
Exclusivity
One patent per invention
Can be slight variations between patents
Without patent holder permission no one can make, market, use, import, etc the patented invention
Otherwise, regarded as patent infringement
Territory
Patent limited to certain country
No effect in other countries
No such thing as an “International Patent”
Time
Term of a patent is limited
20 years from earliest non-provisional filing date
Copyright: The Hutter Group 2015

12. Patents as a Property Right
Not a monopoly
A right to exclude
Broader
Can use
Not use
Keep others from doing what they would otherwise be free to do
No right to practice the invention claimed
Owner can be blocked by other’s patent rights
Must ensure “freedom to operate”
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13. Important New US Option: “TrackOne”
Can obtain patent < 1 year
More expensive up front but
Total process less expensive
Issued patent could increase startup valuation
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14. Licensing/Monetization
Perception that licensing/monetization viable outcome for protected IP
“IP has value just because it exists”
In reality, IP value is rare
Patents cover novel and unobvious ideas
People buy right to practice validated business models
If the idea protected by the patent has no customers, then patent has no value
Think of in context of exit value
If customers protected by IP, then your IP has value independently of value of the business itself
“Must have”
If have customers, but IP doesn’t prevent those customers from being acquired, has less value
“Nice to have”
If IP has nothing to do with customers, IP not valuable
“No asset value”
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15. Enforcement of IP IP litigation expense prohibitive for startups
“If you’re thinking about litigation, you’ve lost.”
Litigation is not a viable business model for startups.
Even if money not concern, enforcement still difficult in some countries
Use protection in local country to leverage knock-offs in foreign countries
Combine other forms IP/intangible asset protection to reduce possibility that competitors will be able to provide same value to customers
Make yourself the “go to” for customers
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16. Common “Do’s and Don’ts” for IP
“Don’t believe the hype”
The only person who needs a patent is a patent attorney
Investors often “check boxes”
File too early
Validate business models first
File too late
Beware of public disclosures and offers for sale
File too narrowly
Focus on why customer cares vs. how you solve the problem
Outsource process to patent attorney
Legal vs. business
Understand how IP can and will create value
“Make it cheaper to go through you than around you”
Learn to explain to investors etc.
File as soon as possible after validation of business model
Balance risks
Abandon IP that no longer aligns with business model
Understand IP protection is process, not an event
Become IP strategist or integrate one onto team
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17. Copyright: The Hutter Group 2015
QUESTIONS?
Copyright: The Hutter Group 2015