Intellectual Property Law for the Startup Phase

Overview of the PCT “International” Patent Application

administrator — Wed, 30 Nov 2011 20:40:03 +0000

Patents are granted on a country by country basis. If a company is considering “international” patent protection, that is to say patent applications in multiple countries, there are two primary approaches: 1. Filing patent applications on a country by country basis directly in the patent office of those countries – This can present several concerns.

3 Key Terms of a Patent License

administrator — Thu, 27 Oct 2011 04:33:47 +0000

Congratulations! You’ve filed your patent application. The next step is for the inventor to commercialize the newly created intellectual property. The three primary options are to completely assign the patent rights to another party, license the patent rights, or to manufacture, market, and sell the product disclosed in the patent application. Frequently, inventors wish to

Misconception About First to File Provisions in Patent Act

administrator — Fri, 21 Oct 2011 01:04:13 +0000

In receiving questions from clients and others, some incorrectly believe that the new first-to-file provisions of the recently passed patent legislation mean that the first party to file a patent application unconditionally has lawful rights in the patent application, even where a second party misappropriates or derives the intellectual party from the first party. This

Ten Common Concerns with Expanding Business to the United States

administrator — Mon, 13 Jun 2011 23:03:12 +0000

Ten Common Concerns with Doing Business in the United States

Website Terms of Service and Privacy Policies – More Than Law

administrator — Wed, 23 Feb 2011 20:26:11 +0000

Some companies simply copy and paste the terms of service and privacy policies. This can be a costly mistake. The terms of service (“TOS”) and privacy policies (“PP”) should reflect the combination of legal, business, marketing, and ethical concerns of the company. Facebook has received a lot of criticism of its privacy policies over the

Trademark Protection and Control in Technology Matters

administrator — Fri, 31 Dec 2010 21:10:49 +0000

Startup IP, Investors, and Nondisclosures

administrator — Wed, 24 Nov 2010 05:22:02 +0000

Frequently, in an intellectual property consultation with a startup team, we inventory and discuss the intellectual property involved in the business plan and the timing, cost, and strategy in protecting it. As some intellectual property rights can be impacted or misappropriated upon disclosure, the consultation turns towards upcoming disclosures of the proprietary elements of the

Governmental Sources for Inventor Prototyping and Manufacturing Assistance

administrator — Mon, 15 Nov 2010 22:21:08 +0000

Many small businesses need help with design and development of inventions at various stages. A startup may want a mockup or virtual prototype in order to pitch for funding. Later, the business may need a working prototype for further proof of concept. Then that prototype may need to be further refined for efficient manufacture. Thus

Enforcing Intellectual Property Rights in the Startup Phase

administrator — Sat, 30 Oct 2010 15:21:31 +0000

Mission critical assets of a startup business can include its unique products and its branding. If either is usurped, the emerging business may not survive for long. Because of that, the small business must consider protecting those assets. A frequent discussion in the analysis of securing formal intellectual property rights is, of course, the value

Four Free Sources for Possible Patent Licensees or Assignees

administrator — Wed, 01 Sep 2010 04:16:04 +0000

Frequently inventors consider licensing or sale of their patent application or issued patent as the means for monetizing their intellectual property. One challenging step is to determine who might be interested in licensing or purchasing the patent rights. Determining potential licensees or assignees is a key step in developing the business plan. 1. Search Engines

Two Advantages of Monitoring Use of Your Trademarks

administrator — Thu, 19 Aug 2010 21:01:31 +0000

You’ve probably read about the recent dispute between Best Buy, owner of the “Geek Squad” trademarks, and Father Luke Strand of Holy Family Catholic Church, (former?) owner of a VW Beetle adorned with a “God Squad” logo. One of the ways that Best Buy uses the Geek Squad trademark is in a logo form on

Myths Regarding Integrating Internet Data Into Applications

administrator — Sun, 01 Aug 2010 04:36:29 +0000

Lookin’ for information on a chemical, well there’s a database for that. Looking for barcode information, well there’s a database for that. Lookin’ for a local restaurant, … you get the point. There is a lot of useful published data available on the internet in a convenient format. And there are lot of potential applications

3 Key Terms in a Copyright License

administrator — Sun, 01 Aug 2010 02:37:22 +0000

Licensing is one method of commercializing copyrighted material. A license is an agreement which permits another (“the licensee”) to use the intellectual property of the owner (“the licensor”) in a certain manner, typically to sell products based on the intellectual property. A license can be a lengthy document with many options to negotiate, but three

Post Bilski Commentary For Software Startups

administrator — Wed, 30 Jun 2010 21:41:52 +0000

By now you’ve probably read about the “Bilski” decision recently released by the Supreme Court. Most of the coverage has been more focused on the policy aspects of the decision. This post focuses on where a software startup stands from a patent prosecution perspective in light of the decision. Stepping back for a moment, I’d

Patents – An Overview of the Application Process

administrator — Fri, 25 Jun 2010 20:39:57 +0000

Frequently, the creator of an innovative new product or process may seek patent rights in order to exclude others from practicing the new product or process. The typical steps involved in the process of applying for a patent include: performing a search; preparing and filing a patent application; and responding to rejections raised by the

Startup Myth – First Come First Served for Domain Names

administrator — Tue, 01 Jun 2010 02:16:40 +0000

Frequently I encounter businesses seeking to protect a brand name. In discussing the actions taken to date taken, owners frequently state that they have registered the domain name corresponding to the desired brand name. Frequently, they believe that their name is “reserved” or protected because they have already successfully reserved the domain name. It is

Top Startup Trademark Mistake – Failure to Research and Protect the Business Name

administrator — Tue, 25 May 2010 20:20:08 +0000

For emerging businesses, the business name is often synonymous to its branding. The business name may be used in the first product name, domain name, and advertising. A lot of time, money, and thought can be expended while creating that business name and building goodwill in it. An often overlooked aspect of this process is

Small Business Innovative Research Funding for Your Patentable Concept

administrator — Wed, 31 Mar 2010 16:28:53 +0000

Funding is a concern for many startups and small business creating new products. The Small Business Innovation Research (SBIR) is a congressionally authorized, federal program that may be an option for funding for some of those businesses operating in select fields of technology. Two of the key driving policies of the program are to help

Provisional Patent Applications Must Have Sufficient Technical Description

administrator — Thu, 04 Mar 2010 14:10:10 +0000

Frequently I hear the misstatement that one can just submit some notes and pictures of one’s product in a provisional patent application. People think this is so because the application is “informal” and will not be examined by the patent office. Unfortunately, I have seen multiple situations where an entrepreneur had an inadequate disclosure because

Beware: Patent Application Drafting Software

administrator — Sun, 21 Feb 2010 12:48:38 +0000

I have reviewed a few situations where someone has sought direction after submitting a patent application which was created using patent application drafting software. Such software is typically marketed as allowing one to create quality patent applications without having any prior experience. Of the applications that I have reviewed where the applicant used such software,

Warning: Inventor Assistance Companies

administrator — Sun, 21 Feb 2010 12:42:16 +0000

It is tough to sit across the desk from someone and tell them that I think someone took advantage of them, especially when that money could have been better used to help them with prototyping or other steps in their business plan. When I have spoken with people who have used inventor assistance outfits, it

Common Factors in the Decision to File a Patent Application

administrator — Sun, 14 Feb 2010 20:14:29 +0000

When working with an inventor or startup, a frequent question is whether it is financially prudent to proceed with a patent application. More often than not, I am not in a position to concisely answer the question, as the question may hinge more on economics than intellectual property. A patent search may shed some light

Keep Your Startup’s Data Secret

administrator — Mon, 25 Jan 2010 16:04:46 +0000

Recently I have talked with some scared startups. Scenario #1: Startup has its data on a flash drive and loses the flash drive. Scenario #2: Person has startup’s data on a laptop and the laptop is stolen. The common theme to both scenarios is that they had unencrypted intellectual property on the drives, thus the

Intellectual Property Agreements – Write Them Down!

administrator — Thu, 07 Jan 2010 18:12:27 +0000

I know that you have heard it a million times, but I have to say it once more: Write it down! Entity agreements (of which a portion may include intellectual property issues) for the startup should be written down. By now, you’ve read about the Crunchpad lawsuit, where its looks like the Crunchpad is no

Advantages of Trademark Registration for Startups

administrator — Wed, 06 Jan 2010 02:43:50 +0000

Recently I had a discussion with a business who had been using a trademark since about 2004. Unfortunately, it had not registered the trademark. In the meantime, another business had started using a similar version of the mark and also had substantially completed the registration process. Thus the business was in a difficult situation. Sure,