Presentation on intellectual property law issues for enterpreneurs

1. PATENT LAW
FOR ENTREPRENEURS
May 28, 2013
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2. Commercialization
 Moving a product into the marketplace from
the IDEATION stage is not easy, it takes:
1. Money
2. A realistic and robust business plan
3. Intellectual property issue identification
4. Protection of intellectual property
5. A risk management strategy
6. A trusted team of advisors
7. …and more Money
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FRANCIS LAW OFFICE PLLC

3. I have an idea…now what?
1. Do your own search on the internet
• www.freepatentsonline.com
• www.alibaba.com
2. Work with your local Kentucky SBDC/ICC
Office
• Market research
• Business plan
3. Contact a patent attorney for a good
patent/prior art search
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FRANCIS LAW OFFICE PLLC

4. Types of Patent Searches
 Pre-filing search: narrow in scope and cost
effective
• Has anyone else filed for this invention?
 Research clearance: broader than pre-filing
• How are others solving this specific problem?
 Landscape search: broad in scope, assesses
the competitive environment
• What is the competition doing in this category?
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FRANCIS LAW OFFICE PLLC

5. Forms of Intellectual Property
 Patents – Protects useful things and methods
invented by man.
 Copyright – Protects the tangible expression of
human thought…and vessel hulls.
 Trademark - Protects the way we identify the
source of goods and services.
 Trade Secret – Protects confidential information
that provides a competitive advantage.
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FRANCIS LAW OFFICE PLLC

6. When Protection Attaches
 Patents – When the patent
issues…sometimes backdated.
 Copyright – When the work is put into a
tangible form.
 Trademark - Upon first commercial use.
 Trade Secret – Upon creation and protection.
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FRANCIS LAW OFFICE PLLC

7. Types of Patents
 Utility – protects novel inventions having
functional usefulness
 Design – protects the ornamental novelty of
man-made creations
 Plant – protects invented or discovered plants
which are stable and reproduced by asexual
reproduction, and not a potato or other edible
tuber reproduced plant.
 Provisional – doesn’t protect an invention,
just provides an opportunity to quickly obtain
a “priority date” for the invention
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FRANCIS LAW OFFICE PLLC

8. Intellectual Property Issues
EXAMPLES
 Investigate potential infringement issues
• Determine whether your products and services
may potentially infringe the patents or
copyrights of others
 Assignment of intellectual property rights
• Employees generally must assign patent rights
but independent contractors generally do not
• Employers should explicitly state their IP policy
and have employees sign it
• Contractors should agree to assign IP rights
prior to working
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FRANCIS LAW OFFICE PLLC

9. Intellectual Property Issues
EXAMPLES
 Developing a distinctive identity
• Brand name or company name may create
marketplace confusion or even infringe the
trademarks of others
 Identifying and naming all inventors
• If someone contributes something that is
included in a patent claim… they are an
inventor
• Inventors have equal and independent patent
rights unless they agree otherwise
• Excluding an inventor can make the patent
invalid or unenforceable
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FRANCIS LAW OFFICE PLLC

10. Inventorship Issues
Joint Inventors have equal rights to the
patent
Obtain assignments prior to having
someone work on an invention with you
Take notes as to who contributed what to
the process
Put the patent rights into an LLC or other
entity which controls the rights according
to a contractual relationship
Use NDA’s (from an attorney) prior to
disclosing information to third partiesCopyright 2013 Francis Law Office PLLC
FRANCIS LAW OFFICE PLLC

11.  DO NOT make any non-confidential disclosures prior
to filing a patent application
• 12 month grace period in the US
• NO grace period outside the US
• Expensive to overcome a prior filed application –
even if the “inventor” stole the idea from you
 DO NOT attempt to commercialize until you
determine that you will not be infringing a patent
 DO NOT use a brand name until you know that (1)
you will not be infringing a trademark, (2) know you
can protect that brand name, and (3) know you can
get the brand name as a domain name
Beginning Commercialization
AVOID “ROOKIE” MISTAKES
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FRANCIS LAW OFFICE PLLC

12.  Perform your own initial search to see if your
concept is already commercialized and/or
patented
 Beware of Invention Submission Scams
 Identify your market
 Research market size and competition
(KSBDC/ICC)
 Identify potential channels of distribution
 Ask yourself “does the potential value of the
concept justify a patent search…or any
investment at all?”
Beginning Commercialization
BEST PRACTICES
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FRANCIS LAW OFFICE PLLC

13.  Make all agreements in writing
 Don’t solicit money from friends and family
 Seek money from “qualified” investors using
written disclosures of investment risk
 Form a business entity early and know the rules
for preserving the protection it provides
 Separate your intellectual property from your
operating company at the very beginning by
putting it in a different business entity
 Have a written operating agreement with
partners
Beginning Commercialization
BEST PRACTICES
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FRANCIS LAW OFFICE PLLC

14.  Find a patent attorney that fits your needs
• Big Firm vs. Boutique Firm vs. Sole Practitioner
• How many applications have they worked on?
• What is their personal technical background?
• Do they have any product development
experience?
• Do they have any patent litigation experience?
• Do they have alternative fee arrangements…flat
fee?
• What is their hourly billing rate?
Finding a Patent Attorney
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FRANCIS LAW OFFICE PLLC

15. Expect Questions…
 What Problem Does Your Invention Solve?
 What Is Different Than Other Products Already
Available?
 What Materials Have Been Used and Are They
Required?
 Are There Any Critical Ranges or Tolerances To
Make The Invention Work?
 What Is The “Best” Version Of Your Invention?
Why?
Copyright 2013 Francis Law Office PLLC
FRANCIS LAW OFFICE PLLC

16. Patent “Reform” Update
Sept. 16, 2012
• Assignees can now file patents
• Limited post-grant reviews (9 month window)
• “Gotcha” documents permitted
• HUGE increases in fees for post-grant reviews
of patents
March 16, 2013
• FIRST TO FILE BEGINS
• Derivation proceedings (1 year window)
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FRANCIS LAW OFFICE PLLC

17. Patent FAQ
Q. Should I ask a patent attorney to sign an
NDA?
A. No, it only makes you look silly.
Why? You already have attorney-client
privilege. Laws relating to privilege and
fiduciary duty are better suited to deal with the
issue than contract law.
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FRANCIS LAW OFFICE PLLC

18. Patent FAQ
Q. Why shouldn’t I put my patent in my
operating company?
A. To protect it from lawsuits.
Why? If your operating company loses a
lawsuit or files bankruptcy the patent is an asset
of the operating company and will be
transferred to another owner. License the
patent to the operating company from an IP
holding company for more protection.
Copyright 2013 Francis Law Office PLLC
FRANCIS LAW OFFICE PLLC

19. Patent FAQ
Q. My company’s employee handbook says I have to
assign any invention I make while employed by them
back to the company. Can they do that?
A. Maybe
Explanation. It depends on the language in the
handbook. There are limitations regardless of what
your employer tells you. It would generally have to
relate to your work or your company’s business.
Your company may also have rights if you used
company resources.
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FRANCIS LAW OFFICE PLLC

20. Patent FAQ
Q. What happens if my patent attorney
contributes something towards the invention
that ends up in the patent claims?
A. They must be listed as a co-inventor.
Why? All inventors have to be named.
However, patent attorneys have to assign their
rights back to the inventor.
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FRANCIS LAW OFFICE PLLC

21. Patent FAQ
Q. How much does a utility patent cost?
A. It all depends on the subject matter, number of
claims, size of the inventor/entity, assistance from
the inventor, billing rate of the attorney, and the
size of the law firm.
Why? Complex subject matter is harder to
explain, patent fees are based in part on the
number of claims and size of the inventor, and big
firms have more overhead and bureaucracy than
smaller firms.
Copyright 2013 Francis Law Office PLLC
FRANCIS LAW OFFICE PLLC

22. Patent FAQ
Q. How long does it take to get a patent?
A. It all depends on the patent examiner and
novelty of the invention, but expect 3-5 years.
Why? Patent examiners can be very efficient or
very inefficient in examining applications. No
two patent examiners are the same. Also, the
more novel the invention the faster the patent
grant…typically. Design patents tend to be
faster than utility patents.
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FRANCIS LAW OFFICE PLLC

23.  Court ordered compulsory license…in the
public interest. A legal infringement.
 A medical practitioner's performance of a
medical activity that constitutes an
infringement is “fair use.”
• Medical practitioners and health care entities
are not subject to civil action or the damages,
injunctions, or cost shifting provisions of patent
law…but their suppliers are fair game.
What is Fair Use? Patent
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24. Experimental Use
 Experimental use will not normally be deemed
patent infringement.
 If experimentation is the "business" of the
accused infringer then the experimental use
exception does not apply.
What is Fair Use? Patent
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FRANCIS LAW OFFICE PLLC

25. A downloadable copy of this presentation will be
available on www.francis-law.com later today.
Open Q&A Period
Copyright 2013 Francis Law Office PLLC
FRANCIS LAW OFFICE PLLC

26. THANK YOU!
Jim Francis
Francis Law Office PLLC
1025 Dove Run Rd, Suite 201
Lexington, KY 40502
www.francis-law.com
jim@francis-law.com
859-523-8302 (Office)
Registered US Patent Attorney
Registered Canadian Trademark Agent
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Copyright 2013 Francis Law Office PLLC
FRANCIS LAW OFFICE PLLC