what every startup needs to know about ip

8/4/2019 What Every Startup Needs to Know About IP

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WHAT EVERY STARTUP

NEEDS TO KNOW ABOUT IP

Jack Waddey

Waddey & PattersonAugust 22, 2011

A Presentation for CO.LAB Entrepreneurs:

1999-2011 Waddey & Patterson, P.C.


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What is Intellectual Property? Patents

Trademarks Service Marks

Copyrights

Trade Secrets Confidential Information


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What is a Patent?

The right to exclude others from making,

using, selling, offering to sell or importing

the patented invention.

The right extends for 20 years from the date

of filing the application.

Some or all of the rights can be sold orlicensed to others.


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What Computer and Internet

Technologies are Covered bythe U.S. Patent System?

Hardware, Systems, and Networks.

Methods, Processes, and Applied

Algorithms Implemented in Software. E-Commerce and other Business Methods

Implemented Over the Internet.


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1 5,949,875 Parallel data network billing and collection system

2 5,949,044 Method and apparatus for funds and credit line transfers

3 5,947,747 Method and apparatus for computer-based educational testing

4 5,945,653 System and method for establishing and executing functions toaffect credit card accounts and transactions

5 5,884,274 System and method for generating and executing insurance

policies for foreign exchange losses

6 5,884,272 Method and system for establishing and maintaining user-

controlled anonymous communications7 5,884,270 Method and system for facilitating an employment search

incorporating user-controlled anonymous communications

Patents on Business Methods and

E-Commerce Applications


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Patents on Business Methods

and E-Commerce Applications

8 5,862,223 Method and apparatus for a cryptographically-assisted commercial

network system designed to facilitate and support expert-based commerce

9 5,798,508 Postpaid traveler's checks

10 5,794,207 Method and apparatus for a cryptographically assisted

commercial network system designed to facilitate buyer-driven conditional

purchase offers

11 5,779,549 Database driven online distributed tournament system

12 5,768,382 Remote-auditing of computer generated outcomes and

authenticated billing and access control system using cryptographic and otherprotocols

13 5,737,414 900 number billing and collection system and method for on-line

computer services


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Priceline.Com Patent

A data processing apparatus for determining a price of an option to purchase an

airline ticket, comprising:

a central controller including a CPU and a memory operatively connected to said

CPU;

at least one terminal, adapted for communicating with said central controller, fortransmitting to said central controller option pricing information including

departure location criteria, destination location criteria, and travel criteria;

said memory in said central controller containing a program, adapted to be

executed by said CPU, for calculating a price of an option to purchase within afuture period, for a particular ticket price, an airline ticket satisfying the departure

location criteria, destination location criteria, and travel criteria;

wherein said central controller receives said criteria from said terminal and

calculates the option price based upon the criteria.


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Strategic Considerations in

Choosing the Patent System

Can the invention be copied or reverse

engineered?

Are competitors likely to copy/reverseengineer or is there another approach that is

equally valuable?

Is the product likely to be successful?

Would licensing generate meaningful

revenue?

Will patent pending status generate

market share?


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What is the expected length of the product

cycle?

Is innovative technology the primary assetof the business?

Will a patent portfolio increase the value of

the company as perceived by investors or

lenders?

Will a patent portfolio provide negotiating

leverage in disputes with others?


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Will the patent restrict entry into the market

by others?

If you dont patent it, will someone else?

Is there money in the budget (or should

there be)?


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Who Owns Patent Rights? There must be an inventor involved.

Employers own the rights in inventions

made by R&D employees.

If the inventor is a consultant, there must be

a transfer of rights.


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What Are the Legal Tests of

Patentability?

The invention is useful.

The invention is novel.

The invention is non-obvious.


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Essentials of the Invention and

Patent Process

Some important points to remember.


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Before You Get Too Far-- You have a great idea and you cant find anyone whos doing it

Hey, lets get started, engineer a design, build a model, burn through

some $$$$

Oops, did anyone check to see if this has been patented?

Remember, first things first; before you spend a lot of money, do some

searching of the patent system.

www.freepatentsonline.com

www.google.com/patents

Use key words, search the abstracts (ABST/) Do it again

Do it again

You dont want to spend all that time, energy and money to find out

later that the idea is already patented.


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Priority of Invention is

Important

In the U.S., a patent is awarded to the first toinvent a useful, novel and non-obvious device,

system, process, or method.


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An Invention is Conceived

Before it is Made

For purposes of priority in the U.S. patentsystem, the date ofinvention occurs on the date

ofconception, which requires identification of

the problem and creation of a workable and

complete solution to the problem.


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An Invention Date Must be

Proven

In the event of a dispute as to the date of

conception, the inventor must supply evidence(documentation and/or hardware) that: (1) fully

describes or embodies the invention; (2) can be

date verified; and (3) can be corroborated by

someone who understands the technology butdoes not have an interest in the invention.


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An Invention Must be

Reduced to Practice

The invention must be actually or constructively reduced to practice by

construction of a working prototype or by filing

a patent application that fully enables an actual

reduction to practice of the invention.


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The Correct Inventors Must be

Identified

An inventor is one who contributes to the

conception of the invention, not merely to the

reduction to practice. There can be multiple

inventors and sometimes the true inventors

cannot be determined until the patent claims

are drafted.


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Delay Can be Costly

Priority of invention can be lost by failing

either to commercialize the invention or to filea patent application.


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Delayed Filing Can Destroy

U.S. Patent Rights

U.S. patent rights can be lost by an offer to sell,

a publication, or a public use of the invention

more than one year prior to filing a patent

application.


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Foreign Patent Rights Can Be

Lost by Premature Disclosure

Foreign patent rights can be lost by publicationor commercialization of the invention at any

time prior to filing of a patent application.


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Other Resources: www.iplawgroup.com

U.S. Patent and Trademark Office

www.uspto.gov

Software Patent Institute www.spi.org

SoftwarePatents.com

www.freepatentsonline.com

www.google.com/patents


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Trademarks Common Law (unregistered) Trademarks:

e.g. CHOCK-O-LOT Drink Mix

Common Law (unregistered) Service Marks

e.g. LIGHTNING Print Services

Registered Trademarks:

e.g. ADTRAN

Registered Service Marks:

e.g. GRAND OLE OPRY


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Registration of Marks - Benefits Costs approx. $875 to file in one class

(including attorneys fees)

Registered Marks last forever if you dont

allow them to go unprotected and if you

renew them

Registration is NOTICE to the world ofyour ownership of the mark

Registrations in foreign countries - valuable

and comparatively cheap


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What Can Serve as a Mark? Any word, symbol, device used to identify

the goods or services of a party and

distinguish them from the goods or serviceof another

Examples: AMSOUTH, BEATLES

(Compare to Beetles), the color PINK forinsulation, musical notes (e.g., NBC

chimes, Bob Hopes Thanks for the

Memories), Sound of Harley-Davidson


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Other types of Marks Logos,


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Things that cannot Serve as Marks Primarily merely a surnames: WADDEY

Scandalous phrases

Marks that falsely suggest connection with

persons, living or dead (e.g.RINGO drums),

institutions, etc..

Geographically mis-descriptive phrases(e.g., GEORGIA peaches from Florida)

A mark too similar to another registered

mark (To avoid this problem, do a search)


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Other Prohibitions on Marks U.S. Flags

Primarily merely descriptive marks:

CORNER MARKET Grocery store

TOLL FREE DIALING phone services

BEAUTIFUL Flowers

QUALITY SERVICE Any business

NASHVILLE PLUMBING COMPANY

WEST NASHVILLE WRECKER SERVICE


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Ordinary Words for Different

Products are OK APPLE Computers

ARROW Shirts

JOCKEY Underwear

MUSTANG car

BANTAM Books CAMEL Tobacco products

TARGET Department Stores


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Slogans Its Our Money, Not TheIRS

WHERE THERES LIFE THERES BUD

WHERE THERES LIFE THERES BUGS

DONT GET LEFT OUT OF THE COLD

ITS MILLER TIME BUILT FORD TOUGH

HIS MASTERS VOICE

GET MET. IT PAYS.


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Trademarks are ADJECTIVES Always use a trademark or service mark as

an adjective which is followed by a noun

BELLSOUTH Telephone Services

GRAND OLE OPRY Musical show

HARTMANN Luggage

SONY Televisions

Avoid possessive: BAYERS pain relief


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Marks can be lost Aspirin

Cellophane

Escalator

Harmonica

kerosene Thermos

Zipper


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Close calls XEROX

BAND-AID

KOOL-AID

FEDERAL EXPRESS

VELCRO


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For More Information:Waddey & Patterson, P.C.

1600 Division Street, Suite 500

Nashville, TN 37203

615-242-2400www.iplawgroup.com

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