Now youve got a product

what next?
Next steps in IP
What are options for your next step?
Commercialize it yourself
License IP to entity
Do nothing
Further research and development alone
Further research and development with entity
Things you own
Idea and implemention for how to solve a problem
Know how for your product
Name for product
Logo design
Slide presentations about product
Brochure/handouts about product
Possible Kinds of IP protection
Patents and trade secrets
Idea and implemention for how to solve a problem
know how for your product
Trademarks
Name for product
Logo design
Copyrights
Logo design
Slide presentations about product
Brochure/handouts about product
To obtain IP protection
Patents
File patent application with U.S. Patent and Trademark
Ofce (USPTO) and get patent application granted.
Trade Secret
Keep information secret with guidelines for preserving
secrecy.
Trademarks
File trademark application with USPTO and get application
granted.
Copyrights
Embody information in a tangible form (e.g., brochure,
slides, book, video, music, logo).
Copyright registration also available.
IP protection is generally on a per-country basis
Benets of IP ownership
Exclude others from use of the IP
License use of the IP to others
Prevent importation of products that use the IP
Get damages (and sometimes attorneys fees) from
others that use the IP without a license
Do you need a patent?
Alternatives
trade secrets
Good for things that can be kept secret for
longer than the typical life of a patent
(~17 yrs)
rst to market, market maker with no patent
protection
Good for goods with a short lifespan (less
than the typical time to get a patent,
currently about 3-5yrs) that are easy to copy
Should you pursue a patent?
Considerations
How strong are the grounds for IP protection?
How easy is it to copy the IP?
What is the lifespan of the IP?
Who are your competitors?
What is the time to market?
What is your budget for obtaining protection?
What is your budget for enforcing IP rights?
Ultimately, this is a business decision.
U.S. Provisional Patent Application
What is it?
A provisional application for a patent in the U.S.
Benets
Satises statutory deadlines for ling a patent application in
the U.S. (e.g., one year from public disclosure)
Filing date establishes a date of invention
Fewer requirements than a nonprovisional patent
application (e.g., no oath or claims needed)
Less expensive than a nonprovisional patent application
Allows one to mark a product patent pending
Preserves the option to le a nonprovisional patent
application for a year (giving you time to further develop
the idea and nd investors, capital for the patent
application process)
U.S. Provisional Patent Application
What is it?
A provisional application for a patent in the U.S.
Benets
Satises statutory deadlines for ling a patent application in
the U.S. (e.g., one year from public disclosure)
Filing date establishes a date of invention
Fewer requirements than a nonprovisional patent
application (e.g., no oath or claims needed)
Less expensive than a nonprovisional patent application
Allows one to mark a product patent pending
Preserves the option to le a nonprovisional patent
application for a year (giving you time to further develop
the idea and nd investors, capital for the patent
application process)
U.S. Provisional Patent Application
Cautions
A provisional patent application (PPA) only
protects what is described within the
application.
Should be very careful to describe idea fully
and broadly
PPA is not examined and will not lead to a
granted patent.
PPA are not available for aspects that would be
covered by a design patent.
U.S. Provisional Patent Application
What if you don!t le a nonprovisional patent
application within a year after ling the PPA?
If no statutory bars have passed (e.g., one year
after public disclosure, offer for sale, etc.), you
may still le either a PPA or nonprovisional
patent application.
If a statutory bar has passed, the subject matter
subject to the statutory bar becomes public
domain (unless someone else seeks protection
for it).
But, you can still le for patent protection for
aspects of the design not subject to the
statutory bar.
If you do not pursue a PPA
Try to get non-disclosures signed before talking to
third parties.
If you want to pursue a PPA
Decide if you want to do most of the work yourself or
pay a professional to help you.
What you can do to reduce costs:
Do your own patent search
Become familiar with patents by reading them
Draft written description for your idea/invention
Use templates linked from 2.009 patent resources
page
Prepare your own patent drawings
Export drawings from solidworks
Import into powerpoint
Add lines and numbers
Other things to think about
Learn about non-disclosure/disclosure agreements
and licensing arrangements
IANE Jan. 11, 2010 meeting, 7:00PM, 4-231
http://www.inventne.org
Get referrals to local attorneys and patent agents
USPTO website
Go to IANE meeting
What is the process for getting a patent?
A simplied timeline
Day 1
Invention Date
Within 1 year of Public Use
File Provisional Patent
Application
(Optional)
Or
File Patent Application
Within 18 months of Filing Date
Patent Application Published
3 months later
Public Use
Filing Date
Receive e-filing receipt
Or
About Week Later
Receive paper filing receipt
A Few Weeks Later
Notice of Missing Parts
(if applicable)
What is the process for getting a patent?
A simplied timeline (continued)
Goal:
Within 14 months of Filing Date
USPTO Takes Action on Application
First Office Action
Goal:
Within 4 months of Response
USPTO Takes Action
Final Office Action
A few weeks later
USPTO Processes Patent
Issue Notification
(Patent No. & Issue Date)
Goal: within 3 months from
Mailing Date of Office Action
(no later than 6 months)
Respond to First Office Action
Goal: within 3 months from
Mailing Date of Office Action
(no later than 6 months)
File a Response and
a Request for Continued Examination
(RCE)
Or
Start Appeal Process
Goal:
Within 4 months of Response
USPTO Takes Action
Notice of Allowance
Within 3 months from Mailing
Date of Notice of Allowance
Pay Issue Fee
Shortly Afterwards
Receive Letters Patent
Goal:
Within 3 yrs of Filing Date
Issue Date
USPTO Issues Patent