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INTELLECTUAL PROPERTY PROTECTION IN THE US
AYLIN AKTURK SAHINATTORNEY, PH.D. CND, UC BERKELEY LAW SCHOOLCO-FOUNDER, IGNITERS TECH CONSULTING
WHAT IS INTELLECTUAL PROPERTY? (IP)IP is any product of the human intellect that the law protects from unauthorized use by others.
-inventions (Google’s search algorithm)-literary and artistic works (books, movies,
even software)-symbols, images and names used in
commerce
METHODS FOR PROTECTING YOUR IP1) Contracts 2) Patent3) Trade secret4) Copyright5) Trademark
1) CONTRACTSFlexible, effective, cheap
-Non Disclosure Agreements(Negotiating with Investors or business partners)
-IP Assignments Agreements (startup founders, employees)
-Non Compete Terms in Employment Agreements(employees)
2) PATENTPatent is a governmental authority that gives you the right to exclude others from-using-making-selling-offering to sale-importing your patented product in the US for 20 years from filing.
TYPES OF PATENTS-Utility Patents (Software, computer implemented inventions)-Design Patents-Plant Patents
System: Microsoft’s page up page down patentMethod: Apple’s slide to unlock patent Process: Amazon’s one click shopping patent
STANDARDS TO OBTAIN A PATENT PROTECTIONNovel: published document, prior public use, previous patent(German Court said Apple’s slide to unlock patent is not novel, improvement is fine)Useful: provide practical benefit, help solve real life tasks(a motorized spaghetti fork)Non-obvious: ordinary skilled person in the field shall find it a surprising development
ENABLEMENT A patent application must disclose an invention in sufficient detail so that a person of ordinary skill in the art may make and use the invention. It is a public disclosure of the invention in exchange for a monopoly for 20 years. A patent application shall provide;
1) A clear and concise written description 2) Graphs to show the invention
APPLE’S 3D GESTURE CONTROL PATENTUS Patent No 8933876Title: Three dimensional user interface session controlFiled: December 2011Issued: January 2015Abstract:
A method, including receiving, by a computer executing a non-tactile three dimensional (3D) user interface, a set of multiple 3D coordinates representing a gesture by a hand positioned within a field of view of a sensing device coupled to the computer, the gesture including a first motion in a first direction along a selected axis in space, followed by a second motion in a second direction, opposite to the first direction, along the selected axis. Upon detecting completion of the gesture, the non-tactile 3D user interface is transitioned from a first state to a second state.
HOW TO APPLY • United States Patent and Trademark Office
(USPTO)• Patent Attorney or Self• Non US Citizens can obtain patent • Average 4 years • Inventors are real persons• Assignee might be a real person or company(Apple patent)
COST (WITHOUT AN ATTORNEY)Application fee: 70 USD (25% of the full price) for micro entities
140 USD (50%) for small entities. Each independent claim in excess of three: 105 USD, 210 USD Patent examination fee: 180 USD, 360 USDUtility search fee: 150 USD, 300 USD
The average cost will be around 400-800 USD for a micro entity and 1000-1800 USD for a small entity.
COST (ATTORNEY FEES + USPTO FEES)• Depending on the hours worked on the
application • Experience of the attorney • Average cost for a software patent
application
-10000/15000 USD
3) TRADE SECRETInformation that you take reasonable precautions to keep it secret• Coca Cola Formula• Google’s algorithm for its search engine • KFC’s recipe
-strongest IP protection-Just don’t tell anyone or disclose to few people-Free-or cost some money depending on the precautions you take
4) TRADEMARK Name (Chanel)Letters and words (IBM, Amazon)Logo
Sound (windows’ starting sound)combination of these that legally distinguishes one company's product from any others.
APPLYING FOR TRADEMARK• USPTO• Search USPTO’s trademark database • Attorney, non-attorney• The attorney fees plus governmental fees
for trademark registration: 1000-2000 USD• the time period for approval is 6 months to
1 year • enforceable as long as you use it
5) COPYRIGHT Protects the expression of an idea in a tangible form by excluding others from;reproducing, displaying, distributing copies of your copyrighted work.
The Pac-Man Game
Copyright protects the actual artwork and sounds as an audiovisual work
Underlying software as a literary work
…CR CONTINUEDCR protection is automatic which means you obtain protection as soon as you put your original work in a tangible form. -develop a software-save your software in a CD-ROM-write your source code on paper BUT,-you may only file a copyright infringement lawsuit if you have registered your software at USCO
HOW TO REGISTER YOUR CR IN A COMPUTER PROGRAM
• United States Copyright Office (USCO)• Approval takes 8 months for online applications
and 13 months for applications by mail. • The attorney fees plus governmental fees for
copyright registration costs around 250-500 USD • Protection term is authors life time plus 70 years
…CONTINUED . First 25 and last 25 pages of source code with portionscontaining trade secrets blocked out, or• First 10 and last 10 pages of source code alone, with noblocked out portions, or• First 25 and last 25 pages of object code plus any 10 ormore consecutive pages of source code, with no blocked outportions, or•For programs 50 pages or less in length, entire sourcecode with trade secret portions blocked out
BENEFITS OF IP PROTECTION 1. Protects against infringement.2. Generates revenue through licensing
activities.3. The ability to exclude others to enter the
market grants the IP holder an opportunity to reduce competition and set higher profit margins.
4. Serves as an investor magnet as it reduces the risk of litigation due to a potential infringement.
BENEFITS OF IP PROTECTION 5) If your startup’s business strategy is being acquired by a big tech company, your IP portfolio will matter in determination of the acquisition price. 6) Patent portfolio of a tech company is regarded as a top metric in its innovation value as it is a sign that the company has an innovative engineering team. 7) Beneficial in defending your company against patent and copyright trolls.
IP STRATEGY FOR A STARTUP • First, determine if your product is viable
in US market• Second, identify your business goals
and key technology carefully • As you do not have enough resources
only patent your key technology• Apply to patent critical features which
are not easy to design around.
ALWAYS ASK THESE QUESTIONS Is obtaining a patent really material to your startup’s success? How durable is your technology in a fast moving sector?Is licensing in case you infringe on someone else’s patent viable? What is your exit strategy? Should you develop a patent portfolio specifically for cross-licensing in case you infringe?
CONSIDER PROVISIONAL PATENT APPLICATION
Cheap: 65 USD application fee1000-1200 USD with the support of an attorney
Early filing dateYou will have 12 months to look for more fundingYou may use “patent pending” status
CONSIDER OTHER IP PROTECTION METHODS
Copyright, trademark and trade secret protection as the costs are considerably low compared to patent application.
E MAIL AYLIN FOR QUESTIONS
