inter continental ip "making money from your ideas"
DESCRIPTION
This presentation covers the important aspects of intellectual property for your ideas and how to make money from these idea.TRANSCRIPT
Making Money From IdeasAn Overview of Patents, Trademarks, Copyrights, and
Licensing
Other Offices in Hong Kong and Bangkok
Presented by:
Eric A. HanscomManaging Attorney
2141 Palomar Airport Road, Suite 320Carlsbad, CA 92011
Phone: (760) 651 0142Email: [email protected]
Website: www.iciplaw.com
Warning: Do not discuss your invention in this class!
35 U.S.C. §102: You have 1 year from the time you first “publicly disclose” your invention until you have to file for patent protection.
Patents
• A right to exclude others from manufacturing, selling, or using your invention for a number of years.
Trademarks
• Any name, symbol, figure, letter, word, or mark adopted and used by a manufacturer or merchant in order to designate his or her goods or services and to distinguish them from those manufactured or sold by others.
Copyrights
• The legal right granted to an author, composer, playwright, publisher, or distributor to exclusive publication, production, sale, or distribution of a literary, musical, dramatic, or artistic work.
Trade Secrets
• A formula, process, device, or item of information used by a business that has economic value because it is not generally known or easily discovered by observation or examination and for which reasonable efforts to maintain secrecy have been made.
Protecting Your Ideas With…
Type of Intellectual Property
Protects
Average time until issue or
final rejection?
Expect to pay (attorney
fees + costs)*
Length of protection
Renew-able?
Practical examples in
business
Patent (Utility)
How something works 3 years$7,000 - 50,000
20 years from date of filing application*
NoDevices,
substances, business methods.
Patent (Provisional)
1 year grace period to file a utility patent
application1 year
$3,000 - $6,000
1 year "grace period"
NoDevices,
substances, business methods.
Patent (US Design)
How something looks 1 year $2,00014 years from date of issue
NoUnique shapes of
products
Patent (European
Design)How something looks 5 months
$3,000 - $5,000
Up to 25 years from
date of issueNo
Unique shapes of products
Trademark Name or logo related to business identity
10 months$1,000 - $5,000
Potentially Infinite w/ 10
year extensions
YesCompany names,
brand names, slogans.
Copyright Artistic creations 3 weeks $500 - $1,000Life of author plus 70 years
No
Websites, owner's
manuals, packaging, advertising materials.
* Certain Exceptions Apply
Who is going to pay for this?
Investors
Government Grant
FFF
You
• Venture Capitol• Hedge Funds
• Healthcare• Environment• Antiterrorism
• Friends• Family• Followers
• Never a good choice
Should You Protect Your Idea?
Legal Considerations
Protect your idea from theft
Barriers to protecting your
idea
Practical Considerations
Sell your idea
Finance your idea
Can You Patent Your Idea?
Can A Patent Protect Your Idea?(35
U.S.C §101)
•You must invent or discover something new and useful
•Only the following subject matter can be patented:•Processes•Manufactu
res (products)
•Compositions of matter (substances)
Did Someone Else Beat
You To It?(35
U.S.C. §102)
•Is there a patent, published paper (including published patent applications), or other public disclosure?
•Did it happen before your invention date or more than 1 year before the filing of the application?
•This is true even if you had no knowledge of the other public disclosure
Is Your Invent
ion Truly Uniqu
e?(35
U.S.C. §103)
•No patent if your invention is an “obvious improvement” over someone else’s public disclosure
•Usually the largest hurdle in obtaining a patent
•This is true even if you had no knowledge of the other public disclosure
How do You Know What Disclosures are Out There?
• Should I apply for a utility patent?
• Business decision based upon prior art references found and economic benefit of obtaining (or at least filing for) a patent
Analyze the Results
• Looks for issued patents, published patent applications, and products on the marketplace that are similar to yours
• Everything cannot be found
• Use a Prior Art Searching company that ONLY does prior art searches; Do NOT use invention submission companies who will give you a “package deal” that includes a prior art search and a patent application
Prior Art Search
Parts of a Utility Patent
Abstract
• Summary of 150 words or Less
DrawingsBackground
of the Invention
• A simple introduction to what your invention is. Describes the general field of the invention, and sets up why the prior art fails to solve the problem that your invention fixes.
Detailed Description
• This section describes exactly how the invention works by referring to the drawings. Describes in detail why your invention is not a mere “obvious improvement” over existing patented inventions.
Claims
• This is the section that protects your ideas
• It lays out the individual elements of your idea – basically what you “claim” as your invention.
Title Page
Infringement
A Patent gives
you’re the right to exclude others from
making, using, or selling
the invention.
A patent is good only in the country where you have the
patent.
To infringe a patent, you must infringe one claim of the
patent.
To infringe a claim,
you must infringe every
element of the claim.
4 Take-Away Items you should remember
Infringement
Claim 1: A Laptop
Comprising
A Scanner
A Copier
A Fax
A Printer
Claim 1: A Laptop
ComprisingA Scanner
Claim 2: A Laptop
Comprising A Copier
Claim 3: A Laptop
ComprisingA Fax
Claim 4: A Laptop
ComprisingA Printer
Patent 1: Narrow Claims
Patent 2: Broad Claims
The Competition
Hing Wong: A Hong Kong company importing into the
U.S. a laptop computer with a photocopier and a scanner
built into it.
Francoise’s Computer Center: In the U.S., he builds a laptop computer that contains a fax. He does not sell it in the U.S., but rather exports all of the
laptops to France.
Throckmorton V. Cox, III: 12-year old computer genius living in New York who has customized his laptop to
contain a scanner, fax, printer, and cell phone. He made it
himself, and has never sold it to anyone.
Your Invention
• A Laptop that includes
• A Scanner• A Copier• A Fax• A Printer
Infringement
What about Felipe
Santiago?
He is a Chilean businessman who makes laptops in
China.
These laptops contain a fax,
scanner, printer, and photocopier.
He ships the laptops directly from China to
Germany.
Basics of the Patent Application Process
File Application
Allowance Issue
File Application
Office Action
Response
Allowance Issue
File Application Office Action Response
Final Office Action
Response Allowance Issue
File Application Office Action Response
Final Office Action
Abandon
File Continuation Application
Office Action Response Allowanc
e Issue
File Application
Office Action
Response
Allowance Issue
Trademarks v. Servicemarks
Trademarks (Products)
Servicemarks (Services)
Trademarks (45 Classes)
What can be Trademarked?
Preliminary Consideratio
ns
Is my name unique enough to get a
trademark? (The more fanciful the better. Nike, Xerox, Surf ‘n Sue v. San Diego Legal Services.
Colorful logos, tag lines, slogans are all good.
Should I pay for a trademark search?
Business Name, Logo
Slogan, Logo
Product Name
Color, Sound, Shape
Basics of the Trademark Application Process
File Application
Office Action Response
Allowance Publication
Trademark Issues
First renewal fees are due
between years 5 and 6, and year
9 and 10
Subsequent renewal fess are
due every 10 years
Opposition
Copyrights
• Websites• Brochures and other Advertising
Materials• Packaging• Owner’s Manuals
What should inventors consider
copyrighting?
• Loser usually has to pay some attorney’s fees and court costs
• Statutory Damages of up to $150,000 per infringement for knowing and willful infringement.
Copyright Lawsuits
Foreign Patents and Trademarks
Foreign Patents must be filed: •Directly in the foreign country•Buy yourself time with a Patent Cooperation Treaty (PCT) filing
Foreign Trademarks can be filed:•Directly in the foreign country•En masse through the Madrid Protocol
Key Factors:•Number of People in the Country•Average Income per Person•Geographic and/or Cultural Factors: Will they buy your product?
•Enforcement of Intellectual Property: Will that country enforce your IP?
USA
• 40 – 50% of world’s market for many goods
Other Buyers
• Europe, Japan, Australia, Canada
Manufactur-ing Sites
• China / Hong Kong, Taiwan, South Korea, Vietnam, Thailand
Defensive Patents /
Trademarks• China
Shipping Ports• Hong Kong,
Singapore
Key Countries
The Invention Game
Winners Losers
Thinking Outside the Box
(20% extra credit)
Good Invention (1/3)
Tenacity (1/3)
Good Luck (1/3)
Under Funded
•Poor Planning
•Not enough money spent on
IP
Spend Too Much Money
on IP
Too Scattered / Wait Too
Long
Inventor ParanoiaNever tell your idea to anyone and die happily, but without
having made any money off your idea, because you kept your
secret.
“There are 3 things every successful inventor needs to do:
1) trust some people, 2) take some chances, and 3) spend
some money”
Common Concern: “The Chinese will steal my idea so I won’t use
them for prototypes or production”
Fact: There is a security concern in overseas manufacturing, but I
have seen much more “copying of successful products” than
“stealing of ideas”.
“There are two types of inventors: the paranoid, and the more paranoid”
• Ron Reardon, President, National Association of Patent Practitioners (NAPP), NAPP Conference, 2009.
Scams
Patent Scams• Invention Promotion Companies. • “Package Offer”: Prior Art Search + marketing plan + production
plan + 3 trade show booths + prototype plan for $18,000, with a utility patent application for ONLY $2,000. Too good to be true? Yep.
• You are really paying $20,000 for a utility patent application being done without a decent prior art search.
Trademark Scams• Occur after you get a trademark.• Are mailed to the address on the trademark (so ask if you can
use your attorney’s office as the address).• Ask for money close to normal filing fees.• Read carefully, as after you get a trademark, you owe more
money after year 5, 15, 25, etc.
Making Money:Preliminary Considerations
Find Your Target Audience
• Warning to those who don’t like “selling”: you will have to “sell” your invention to someone
• If no one will buy it, probably won’t make money
Do Research
• Trade Shows• Visit Local Stores
Create a Prototype? Often not necessary• U.S.• Asia
Making / Selling it Yourself:
• Find a Factory, avoid front door and back door.
• Transportation to Dock• Shipping• Warehouse in Long Beach• Customs• Distribution• Sales• Charge-backs• Advertising• Allowances • Defective Policies• Accounting• Unforeseen Circumstances
Making Money From Your IP
License
• License is a “rental” of your IP
• “You have the rights to make and sell products covered by this patent in California for one year. I get $25,000 up front, and you pay me 3% of gross sales per year.
• Considerations:• Exclusive or Non-
exclusive• Territory• Royalties• Accounting Period• Audit Rights• Ending, Renewal, and
Termination of the License
Assignment (Selling Your IP)
• Assignment is a sale• “You give me $500,000,
I’ll give you the patent.”• Less common than
licensing because the assignee is less likely to pay a decent price with an unproven invention, and once you have “proven” the sales ability of the invention, you probably don’t want to sell it anyway.
Putting it all together
Prior Art Search -> Is it worth filing for a Utility Patent?
Yes -> Get “patent pending” (Utility or Provisional), then try to sell or license.
No -> Will patent laws change? Worth a Hail Mary application to get patent pending status for a few years?
In any case -> Would a Design Patent be useful?
In any case -> Trademarks and Copyrights.
Making Money From IdeasAn Overview of Patents, Trademarks, Copyrights, and
Licensing
Other Offices in Hong Kong and Bangkok
Presented by:
Eric A. HanscomManaging Attorney
One Carlsbad Research Building2382 Faraday Ave., Suite 310-CCarlsbad, CA 92008
Phone: (866) 890 6054 Fax: (760) 494-3014
Email: [email protected]: www.iciplaw.com