IP fundamentals for Entrepreneurs

Dee Dao, PhDAssociateInnovation Venture Fund

Topics

u What is intellectual property (IP)?

u What are the different types of IP?

u What is considered as IP?

u Where do you go for help?

u What resources are available?

Can you identify different types of intellectual property (IP) ?

IP identified

Cartonspout

Telephone

Mouse

LCDmonitor

Staple

iPhone

Keyboard

NYUlogo

BoxedWaterisBetter

Applelogo

Questions

u What should I think about as I’m planning?o Know the different types of IPo Know that a suite of IP is often used to protect

your product or services o Identify where is there IP in your

product/serviceso Look at your startup product and services and

ask yourself what IP strategy would support my business strategy today and in the long term

What are the different types of IP?

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Types of IP What is protectable? ExamplesTrademark Brand (ie… drug

names)Marks, Logos, slogans

Copyright Creative expressions of the idea, not the underlying ideas

Software, songs, website content

Trade Secrets Secrets with economic value

Things that are not sold:- customer lists - manufacturing - formula- algorithm

Contract, NDA As defined in the contract

Discoveries, results

Patent Designs, Inventions New technology or designs

What are the IPs in the Smart Phone?

u Trademark

u Utility Patents

u Copyrights

u Trade Secret

u Design Patent

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What are the IPs associated with Coke?

u Trademarks

u Copyrights

u Utility Patents

u Trade Secrets

u Design Patents

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The Origins of Patent & Copyright Law

o “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

o First US Patent, July 31, 1790Inventor: Samuel Hopkins

“Improvement in the Making Pot Ash and Pearl Ash by a new Apparatus and Process."

Article I, Section 8, Clause 8 of the US Constitution, empowers Congress:

Why get a Patent?

Barriers:o Protect from direct copy or a space in the

market for your producto Deter others from entry into your marketo Assert/enforce rights against an infringer or

competitor

Assets:o Revenue source – through licensing or sale o Asset for early stage startup

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What’s patentable?

Broadly speaking: “… any novel, useful, non-obvious process, machine, manufacturing, or composition of matter or any novel, useful, non-obvious improvement thereof”

u Work with counsel to figure out the details

What’s NOT patentable?

u An idea or concept that has not been reduced to practice

u A pure mathematical formulau Phenomena of nature

Types of Patents

u Utility: processes, machine, article of manufacture or composition of matter or any new and useful improvement thereofo ie … Products and how it is used or

manufactured

u Design: new, original and ornamental designo ie… how something looks

Utility patent example

Design patent example

What is Freedom to Operate?

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Freedom to Operate (FTO):

The ability of your startup to develop, to make and to market product or services without legal liabilities to other patent holders.

Patent vs. Freedom to Operate

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- ABC Startup’s Patent Application for new door handle design:

ü Novel and Non-Obviousü Enabled

- Patent Issues! ABC can exclude anyone else from making or selling this door handle

The lock happens to be patented by XYZ Inc. But…

Product: A door handle with a lock

How can FTO analysis help avoid common mistakes of founders?

u Common mistakes:o Ignoring the competitor’s portfolioo Failing to in license key patentso Failing to conduct trademark searches

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IP strategy & Considerations for Start-ups:

u IP strategy should support long-term product development goals

u Value of any given patent is not absolute, but relative to a competitor’s patent filings

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Innovation Harvesting

u Determine the type of IP protection you needo Trade Secret, Utility/Design Patent, Trademark,

Copyrights

u Determine if your invention is patentableo Prior art searcheso Patent searches

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Prior Art Search

u Determine whether your technology has been disclosed

u Determine whether a design around effort is needed

u Help decide the value in filling

u Informs patent strategy

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Prior Art Searchesu Search Web of Science engine

o Literatureo Manuscripto News

u Search Google Patent: database is about year behind, mostly US centric o Insight into who filed on that ideao Granted patents

u Search Patent Lens: Gives you families of patentso Additional info from google patent search

§ Provides info about which countries the patent is filed

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Key Questions to ask when establishing an IP strategyu Who owns the background technology in your space?

u How rapidly is new innovation taking place in your space?

u Where are the opportunities for strategic growth, investment or licensing within your field?

u Where are the new and emerging technologies being developed in your space?

u Which patents are the most valuable for your products?

u Is there a business case for this filing?

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IP strategy considerationsu When should you file?

o File before you talk/present your work publicly,

o Before selling

o US is a First Inventor to File System

o Only get US protection

§ If the inventor files within 1 year of public disclosureu Looking for international protection?

o File before public disclosure

u Do you have FTO?

u Work with counsel on

o Should you file both blocking and defensive patents?

o Are broad protections available?

o Is narrow protection the only option?

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Patent Filing Fees (~ $50,000 – > $500,000)u Step 1: Initial Filing (Provisional Or Non-Provisional Application):

u $15K – 50K

u Step 2a: 1 Year – Non-Provisional and/or PCT: $6K – 15K

u Step 2b: “nationalizing” PCT International Application $25K – 250K

u Step 3: 1-5 Years – US Prosecution, Office Actions &

Amendments/Responses: $10K – 50K+

u Step 4: US Patent Allowance & Issuance: $1K

u Step 5: Maintenance Fees at 4, 8, 12 years: $1K - 3K+

u Step 6: Continuation and Divisional Applications: $10K – 50K+

u Step 7: 2.5 Years – Foreign National Stage (EPO, Canada, Japan,

China, India, etc.): $10 - 50K+

u Step 8: Foreign Prosecution, Allowance, Maintenance: $50K - $250K+

Patent Timeline

Questions

u Where do I go for helpo Office of Industrial Liasono Counsel with expertise prosecuting patents in

your space

NYU Office of Industrial Liason

u If you are working on projects that are funded with federal grants OR use NYU resourceso file an invention disclosure form with OIL

u If you would like to learn more about IP policy at NYU, contact OIL

Lesson Learned

Patenting should be business driven, to claim something commercially viable and having economic value

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http://www.wipo.int/edocs/pubdocs/en/intproperty/450/wipo_pub_450.pdf

Moregeneralinfoabouttrademark,copyright,andpatent

DeepdiveintoPatentingprocess

Welcome the opportunity to talk with YOU about your research & startup ideas!

dee.dao@nyu.edu

@nyuentrepreneur

entrepreneur.nyu.edu

16 Washington Place

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