Bob Brill patent IP lawyer with business sense | Brill IP Law Office

TAG | Entrepreneur Idol

I was pleased to be asked to speak for the Entrepreneur Idol Class on Intellectual Property (IP) as part of InNUvation at Northwestern University.  In preparation, I requested and received the following questions of interest to the class, building on my guideposts for making the presentation meaningful to attendees, as mentioned in my talk and post from September on Copyright Fair Use.

***NOTICE of September 26, 2011: a number of changes have occurred in the patent landscape subsequent to the preparation of the post below, as noted at Patent Eligibility and Reform.***

Class Questions

What’s the first step for a new venture to check if its idea is already patented by another individual/company?

What free resources are there for limited budget ventures?

What are the steps to secure my new idea?

What considerations should be made for a web-based idea?

What is the most important intellectual property issue I should consider before launching, even in the campus level?

Perspective of My IP Practice

I am a businessperson, lawyer, and technologist, generally in that order, with each aspect crafted to dovetail with the others.

Technology

I have background in electrical, computer, and mechanical engineering plus computer science, and over fifteen years of IP experience with several hundred projects, as mentioned in my August speech and post, patent samples, and LinkedIn profile.

Law

The law continues to evolve and unfold, usually with deep roots to the past.  In discussing the class questions, I will give pointers on various aspects of IP to help you recognize situations as they arise in your business and when/whether/how legal review may make sense for you.  In case people desire a deeper review of the traditional categories of IP, we can refer to my June talk and post that compared Patents, Trademarks, Copyrights, Trade Secrets, and Licensing.  In addition, my August talk and post gave a deeper review of the IP and business of Open Source software.

Budgets

Operating under the law and selectively as consumers of legal services, people have opportunities to help advance IP legal work product with reduced budgets when:

the client and other client-side participants in the project are willing and able to handle technical requests from the lawyer; and

the lawyer is experienced and skilled in execution and collaboration on IP matters.

I can give guides for dollar amounts and work flow that may fit with your business.  We can make a strategic choice, or plan work in stages.  Flexibility, knowledge, and skill by the lawyer in the client discussions can cover the quality, work product, and timing to meet the circumstances and targeted funds.

On patent matters, a number of clients appreciate a work style of leveraging my input for further work on the client’s end in the technical description and drawings that I can use for the filing.  I appreciate my clients need to make business decisions, and I am experienced working with budgets and considering business aspects.

Business

Legal topics will arise in your business.  Offensively, you may wish to align preservation of your business advantages with your investments and preparation.  Defensively, you may wish to align your possible exposure with your investments and preparation.  Being informed at each stage allows you to make strategic decisions to invest, work around, or discount certain present and future risks and opportunities.

Investment

An investment may involve pursuit of legal rights on your innovations, or a review of the current or prospective rights others may have on your playing field.

Workaround

A workaround may involve scaling back a legal budget, or allocating a business budget along a different path in view of understood circumstances.

Forgo

A possible business decision is to forgo investment in a legal budget as a particular innovation’s legal aspect is perceived to pale in comparison to other market forces such as speed to market and sales.

Vantage Points

You need to understand your business interests for sustainability, partnership, acquisition, or outside funding, which may in turn encompass a possible need to attend to the attractiveness, palatability, and formidability of your IP portfolio to customers, market players, or venture backers.  A discussion of business considerations of IP portfolios appears in my post on Patent Portfolio Incentives.

Economic Snapshot

As you may understand from the discussion so far, my IP practice looks at multiple aspects to understand the meaning and value of possible IP protection to your business at the front end of review, allowing for strategic allocation of budgets and resources for IP to be a helpful tool in your business success. My role today in this class is to speak to the questions presented and leverage my IP expertise for you. I recommend you take advantage of the other classes in this series and your own formal and personal study to educate yourselves on economic issues that impact your business.  In this spirit and before passing into a more isolated review of IP considerations, following are business items you may wish to review.

An article in Forbes Magazine states that the source of all real profit and growth is human creativity and entrepreneurship.

Howard Tullman recommends timely decisions by successive approximation rather than postponed perfection.

An innovator working with virtual reality displays attracted business opportunities by posting his video demonstration on YouTube.

Sequoia Capital emphasizes that funded companies need to advance revenue and slash costs, including a focus on product features that are essential to the customer.

An interview with a cost cutter hired by startups gives pointers for business management in the current economic paradigm shift.

What’s the first step for a new venture to check if its idea is already patented by another individual/company?

You really have two questions.

Patentability

Offensively, you may check whether or not prospective patent rights are available for your idea.  Purely on the technology, you can search published patent applications and issued patents, whether or not unexpired, as well as scientific and other publications.  Please note that the review whether your invention is patentable over the prior art considers all technical disclosures regardless whether the references are patents or general technical, literature, or sales materials.  In addition, the review for patentability looks at all content of references.  For example, the prior art aspect of a third party’s patent encompasses all the disclosure of the patent, regardless if the pertinent disclosure is unrelated to the claimed invention of that patent.

Freedom to Operate

Defensively, you may consider whether or not your planned product or service falls under the valid and unexpired patent rights of a third party.  This consideration exists regardless whether or not you pursue any protection of your idea.  This type of searching may be viewed as Freedom to Operate or Clearance searching.  The review is sophisticated and involves serious study of the claims of issued patents.

What free resources are there for limited budget ventures?

Web 2.0

To keep current and share thoughts in the Web 2.0 world, my main tools presently are Twitter microposts http://twitter.com/bobbrill, Facebook office page posts http://facebook.com/bobbrill.net, Disqus comments http://disqus.com/people/bobbrill, and blog RSS feeds http://feeds.feedburner.com/bobbrill that link to my blog http://bobbrill.net/.  Regular work correspondence continues by email, and some physical carriers. Complementary to electronic communication in keeping my skills as value-add, is real-world interaction of listening, talking, meeting, and collaborating in individual and group settings.

General Searching

Wikipedia

Google

Patent Searching

Issued US Patents http://patft.uspto.gov/netahtml/PTO/search-adv.htm

Published US Patent Applications http://appft1.uspto.gov/netahtml/PTO/search-adv.html

Kindly note that the publication of applications has approximately 18 months delay from their filing date, so you would not know completely what has been filed within the last 18 months on a rolling basis.

Patent Application Information Retrieval (PAIR) http://portal.uspto.gov/external/portal/pair

European Patent Office (EPO) http://worldwide.espacenet.com/

WIPO’s global collections of searchable intellectual property data http://www.wipo.int/wipogold/en/

Trademark Searching

Trademark Electronic Search System (TESS) http://www.uspto.gov/ebc/index_tm.html

Trademark Status & Document Retrieval (TSDR) http://tsdr.uspto.gov/

Trademark Applications and Registrations Retrieval (TARR) http://tarr.uspto.gov/

Trademark Acceptable Identification of Goods & Services http://tess2.uspto.gov/netahtml/tidm.html

International Trademark/Servicemark Classes http://www.uspto.gov/trademarks/notices/international.jsp

WIPO’s global collections of searchable intellectual property data http://www.wipo.int/wipogold/en/

What are the steps to secure my new idea?

If secrecy is possible, then you can consider trade secret protection as an alternative to patent protection.  If secrecy is impossible, then patent protection is a proprietary possibility.  Since I’ve been told many of you are considering web-based businesses, I can expand your question further into software and business method ideas.  Technically, copyrights are meant to protect only the expressions and not ideas under the idea-expression dichotomy, though some fuzziness occurs when drilling down to the protection of software code.  Also, I note ideas about branding may fall under trademark protection. Licensing of know-how, rights, innovations, and/or creativity may be considered in the protection process.  A flip side of proprietary rights is permission-based licensing such as in an Open Source model, where you preserve downstream permissions to source code. Regardless of the approach taken, the funds employed to obtain rights would not extend into the further efforts needed to assert your rights.  Rather, additional funds or other commitments are needed to enforce rights, though the stronger your position, the better will be your opportunities.

Walking through the categories of IP, I note further detail on each category appears in my posts from talks in June, August, and September.

Copyright

Copyright exists at creation without any notice needed. The first fixation of the work in a tangible medium automatically secures the copyright. Though not required by the law, from a business standpoint you may want to use the symbol © or word “copyright” with the year of publication and name of the copyright owner to provide affirmative notice that you intend the work to have copyright protection. You may register copyrights on your own, without lawyers, at copyright.gov.  The registration fees are modest, currently $35 or $45 depending on your approach.  Registration provides a significant benefit should you have a later copyright enforcement lawsuit.  Registration gives you the right to attorney fees, if your copyright was registered when infringement occurred.  If unregistered, then no right to attorney fees exists when infringement occurred.

Trade Secret

A trade secret protects valuable and secret information that provides an economic advantage.  The trade secret owner self-administers the trade secret protection.  There is no government agency to which you apply to obtain a trade secret.  Instead, the trade secret owner takes reasonable measures to keep the information secret.

Trademark

A trademark is a source identifier.  The trademark lets the public know the source of particular goods or services offered under the trademark.  Trademark protection may be pursued based on actual or intended use of the mark in commerce with the particular goods or services. The circle-R symbol signifies federal registration under US trademark law.  Irrespective of federal trademark prosecution, if any, the designations TM and SM are available for trademarks and service marks.  Such unregistered marks may have protection limited to the geographical area of use, or reasonably expected geographical areas of expansion, for the particular goods or services.

Domain Name

In this era of cybersquatting and typosquatting, you should consider locking in domain names on your desired trademarks early, at their modest costs.  You would prefer to cut out middlepersons who habitually review trademark office public records and squat on domain names, with their intention to seek an advantage and/or premium for getting your intended domain.

Licensing

An IP owner can retain ownership of the IP and grant a license to others for a selected subset of the rights.  The license can be exclusive to the grantee or non-exclusive.  In general, the terms and royalties may be negotiated.  Other times, little opportunity may be available for negotiation such as in a shrink-wrap license or end-user license agreement (EULA).

Assignment

An assignment changes the ownership.  In contrast, a license allows the IP owner to retain ownership of the IP.  The owner grants a license to others for a selected subset of the IP rights.

Patents

We touched on the patentability review.  The information from the client that I may use toward use in determining patentability may be a detailed and concise explanation and drawing of the novelty of the invention.

Budget

In thinking about proceeding with a patent application, you would need to decide on a target budget.  I’m not returning to a deep dive into the business considerations I introduced earlier, though the business side is part of the budget review.  I mention budgets again since they factor into not only the quality of the work product, but also a threshold choice in pursuing patent protection: whether the patent application filing is a) provisional or b) non-provisional.

Dates

Your initial mindset is to keep everything confidential in connection with your innovations. Dates are important in the patent area. Following are some general comments on your timing to keep in mind. For the opportunity of international patent protection, you would need to file a patent application before disclosure and/or commercial exploitation-type activity. If that is not possible, US-only protection remains available for a given innovation one year from the earliest date of any sale, offer for sale, demonstration, public disclosure or public use of the invention. That one year anniversary is the date by which you need to file a patent application, provisional or non-provisional. Another perspective on dates is: others are innovating and may develop ideas and pursue protection in your space. The earlier filing date in such a competition for protection can be advantageous. One way to look at this is as a race to the Patent Office. We want to apply business sense to the decisions.

Non-Disclosure Agreement

On risks associated with disclosure of the invention, your best protection is to complete a patent filing.  With a non-disclosure agreement (NDA), you should impress on the people the importance of the confidentiality.  I recommend talking with them about the topic and pointing to the language in the agreement to help them understand the importance to your business.  Assuming everyone abides by the NDA and you would move along with the patent filing with a reasonable schedule for your business, the NDA may be adequate in isolation, although you are always racing others to the patent office with potential to lose prospective rights.

Getting Started

Content and timing are key for future use in the patenting process.

Provisional Patent Application

To lock in a priority filing date and preserve an opportunity to perfect a non-provisional utility patent application within one year of the priority date, you may file a provisional patent application.  The provisional patent application is a placeholder.  No substantive examination or publication of the provisional patent application will occur unless a non-provisional patent application is filed within one year of the priority date of the provisional patent application and claims the priority of the provisional patent application.

Multiple provisional patent applications can be filed.  A non-provisional patent application can claim priority to multiple provisional patent applications that have been filed one year or less before the non-provisional filing.  The priority of the provisional filing extends to the content of the provisional filing.

Should the non-provisional filing contain additional matter unsupported by the disclosure of the provisional filing, that additional matter would not be entitled to the priority date of the provisional filing.  Rather, such additional matter would have the later priority date of the non-provisional filing. Furthermore, if international protection is available, the international non-provisional patent filing also needs to occur within one year of the provisional filing priority date.

Non-Provisional Patent Application

The non-provisional patent application has greater requirements than a provisional patent application.  A Patent Examiner in the Patent Office will examine the claims of the non-provisional patent application.  The Examiner considers prior art in determining the patentability of the claims.  The priority date of the claims delineates whether art predates the invention, and therefore is available to the Examiner for use in rejecting the patent claims.

Patent prosecution involves interaction with the Patent Office after the filing of a patent application.  The prosecution of the patent application seeks to obtain allowance and issuance of a patent, often involving negotiation with the Patent Examiner over the patent claim language. The major parts of the patent application in electrical, software, and mechanical technologies include a specification of detailed text with accompanying drawings together enabling practice of the invention, plus claims supported by the specification and drawings.

The claims define the prospective patent rights. The language of the claims in part serves to distinguish the prior art.  In another aspect, the claim language serves to present the invention in a patent-eligible form, as patentable subject matter.

The Patent Examiner can raise objections and rejections such as to the claim language in view of the prior art, as well as over the subject matter sought to be claimed.  In response, the patent owner often through a patent lawyer might present arguments and/or claim amendments supportable by the patent application as filed.

More discussion of patent prosecution appears in my posts on claim construction, the doctrine of equivalents, prosecution history estoppel, claim amendments, patent prosecution techniques and coordination, and US and international priority dates for provisional applications and public accessibility.

What considerations should be made for a web-based idea?

The discussion above applies to a vast array of ideas, including web-based ideas.  Something is on the IP horizon with potentially greater concentrated impact on web-based ideas.  For web-based ideas that could fall in the business method patent category, an upcoming court decision has significance.

In September, I posted a status update on Bilski Business Method Patent-Eligibility.  The Court of Appeals for the Federal Circuit should decide In re Bilski within a few months.  The case reviews a business method patent claim that had been rejected by the Patent Office as ineligible for patent protection by being directed to nonstatutory subject matter.

Bilski’s claimed invention involves hedging the consumption risks associated with a commodity sold at a fixed price.  In a nutshell, the Federal Circuit is taking another look at its 1998 decision which had said Congress intended not to place any restrictions on the subject matter for which a patent may be obtained beyond those specifically recited in 35 U.S.C. § 101.

What is the most important intellectual property issue I should consider before launching, even in the campus level?

Ownership of the IP.  Review any policies or agreements in place and all the individuals and entities involved to see if any outstanding obligations exist.  Decide if you wish to negotiate any outstanding obligations.  Consider any agreements you can put in place looking forward.  Looking in any direction, you may obtain cheaper terms for rights as a startup than you would dealing with an outstanding obligation after you are successful.

Text Copyright © 2008 and Notice Copyright © 2011 Bob Brill

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