patents for startups- why and what?
TRANSCRIPT
Intellectual Property RightsAn Introduction
Anoop Kurup
Co-Founder & Director
1. Types of Intellectual Property
Contents
2. Patents
3. Q & A’s
4. Case Studies
5. How to Document your Invention5. How to Document your Invention
6. How to do a quick IP Assessment
7. Do’s and Don’ts
TYPES OF INTELLECTUAL
Introduction to IP
TYPES OF INTELLECTUAL PROPERTY
Copyright
Trademark
™ vs ®™ vs ®
Public Disclosure
Limited Monopoly
PatentsA patent is an intellectual property right that is granted by a government
applies within the territories and Disclosure Monopoly
20 Years
Territorial Right
Exclude Others
Best Mode
applies within the territories and possessions of the government
expires twenty years from the filing date
A patent gives its owner the right to exclude others from making, using, offering to sell, or selling the invention covered by the patent or from importing the invention covered by the patent
Others
A patent does not give the owner the affirmative right to practice the invention claimed in the patent
Process or Method
What Can Be Patented
Process or Method
Machine or Apparatus
Article of Manufacture
Composition of Matter
Chemical Compounds
Novel
Non- Obvious
Utility
Chemical Compounds
Physical Mixtures
Improvements of Any of the Above
Patents
Utility Patents
Improvement or new invention in any technology area including genetically modified organisms. Has a life of 20
Industrial Design
Utility Patents including genetically modified organisms. Has a life of 20 years from the date of filing
Ornamental aspects of invention. Life of 14 years from grant in US.
Plant Breeders Rights
New varieties of plants made by combining two or more different types of plants.
Patent Claims
The “Claims” of a The “Claims” of a patent define the scope of the invention. The claim language defines the “edge” of the “edge” of the property right.
The requirement
Prior art limits the scope of patent claims
The requirement for novelty means that a patent claim cannot include what is already in the already in the prior art.
Types of IPR : Summary
Industrial DesignPatents
Semiconductor Chipset Design
Trade Secret Plant Breeders Rights
Industrial Design
Trademark
Patents
Chipset Design
Geographic Indications
Copyright
Trademark
QUESTIONS AND ANSWER
Your turn
QUESTIONS AND ANSWER
CASE STUDIES
How companies leverage IPR
CASE STUDIES
Case Study
Gillette Mach 3 is protected by a strong portfolio of more than 35 patents (including patents on the manufacturing process), which deters competitors from entering the “triple blade razor market”.the “triple blade razor market”.
“FIT Biotech Plc acquired assets of Xenerate Ab and starts the
Case Study
“FIT Biotech Plc acquired assets of Xenerate Ab and starts the development of novel gene technology based vascular devices
FIT Biotech Plc announced today that it starts a development of new biocompatible cardiovascular devices, applying its proprietary Gene Transport Unit (GTU®) technology. FIT Biotech acquired the intellectual property rights and other assets of Xenerate AB, a company combining medical devices and gene therapy. Together, FIT Biotech's knowledge in DNA plasmids and gene therapy, and Xenerate's background in cardiovascular device technology, will create a unique platform for the development of medical devices for the treatment of cardiovascular development of medical devices for the treatment of cardiovascular diseases.”
Source: http://www.fitbiotech.com/en_012303_1.html
Case Study
“Exelixis Acquired Key Plant Technology, Intellectual Property And Plant Biology Capabilities Through Acquisition of Agritope
The acquisition of Agritope provides Exelixis with key intellectual property, substantial additional technology including expertise in additional model systems, and extensive experience in plant biology. Combined with Exelixis' existing expertise in bioinformatics, genomics, and complementary plant model systems, this program gives Exelixisand complementary plant model systems, this program gives Exelixisa superior plant genomics program.”
Source: http://ir.exelixis.com/phoenix.zhtml?c=120923&p=irol-newsArticle&ID=779040&highlight=
Case Studies
Israeli based NASDAQ listed company in VOIP domain wanted to raise
IP on Low power semiconductor with focus on reducing power
Transmeta VocalTech Communications
in VOIP domain wanted to raise money from the market. Holds 22 patents.
focus on reducing power consumption on electronic devices(140+ patents)
Got Acquired by Novafora for $255.6 million
Irvine SensorsTelcorida
11 patents were sold for $12.5 Karo Millennium JP LLC, shares jumped 11 percent on NASDAQ after this transaction
A telecommunication R&D firm with 800+ patents
A California based company engaged in creating products in the electro-optical cameras, image processors, and stacked chip assemblies
Irvine Sensors
IP licensing to Aprolase Development Co.for $9.5 million
Telcorida
Got funding from an Invention and private equity investor firm for a "long term commitment”, the new investor will license 500 of their inventions worldwide
DOCUMENTING INVENTION
The beginning of good IPR
DOCUMENTING INVENTION
Documenting Inventions
Keep a notebook!Keep a notebook!
Keep the pages sequential and clearly dated.
Documenting Inventions
Write down your experiments! (especially the Write down your experiments! (especially the ones showing structure of the invention and how to make the invention) = “reduction to practice”
Also write down significant ideas! (ditto!) = “conception”“conception”
Documenting Inventions
Periodically show your notebook to someone Periodically show your notebook to someone else in the lab who is not an inventor (but who has an obligation of confidentiality and can understand what you are telling them).
Have that witness sign and date the pages and indicate that they have “read and indicate that they have “read and understood "the content.
PATENT SEARCHES
Conduct a quick due diligence for patentability
PATENT SEARCHES
A Few Patent Search Resources
Google PatentsGoogle Patents
USPTO
WIPO
EspacenetEspacenet
Free Patents Online
DO’S AND DON’TS
Precautions to be taken
DO’S AND DON’TS
Do’s and Don’ts
1. Public Disclosure without NDA1. Public Disclosure without NDA2. Non Dated Documents for invention disclosure3. Communicating to third party4. Communication protocols
• Comparing with others’ invention• Stating opinions about prior art• Using words like “infringe” or “copied”• Using words like “infringe” or “copied”
