From Invention to Start-Up

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From Invention to Start-Up Seminar
Series University of Washington The Legal Side of
Things
Invention Protection Gary S. Kindness Christensen
OConnor Johnson KindnessPLLC
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TECHNOLOGY EVALUATION
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MAJOR BARS TO U.S. PATENT PROTECTION
Patented or described in a printed publication in
the U.S. or a foreign country over a year prior
to the filing date of the application for
patent. Public use, sale, or offer for sale in
the U.S. of a product embodying the invention
over a year prior to the filing date of the
application for patent.
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FOREIGN PATENT PROTECTION ABSOLUTE NOVELTY
U.S. one year grace period can be a trap for
the unwary since many foreign patent laws require
absolute novelty, i.e. no public disclosure prior
to initial filing.
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PATENT PROTECTION OVERVIEW

• Evaluate invention for
  business merit
• Perform novelty search
• Make filing decision
• Evaluate value of invention in foreign markets
• Make filing decision

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PATENT PROTECTION PROCESS
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ALTERNATIVE PATENT PROTECTION PROCESS
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TRADE SECRET DEFINITION
A trade secret consists of any device, pattern,
design, process, procedure, technique, or
compilation of information that is or could be
used in a companys business and that gives the
company an opportunity to obtain an advantage
over competitors who do not know or use it.
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TRADE SECRET PROTECTION

• Information must be kept secret
• Protection lasts as long as information is
  kept secret
• Trade secret can be lost if another legitimately
  learns of it by
• Disclosure to outsiders without safeguards
• Disclosure in publication
• Observation by visitor
• Reverse engineering

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PATENT RIGHTS
Patents grant the owner the right to prevent
others from making, using, or selling the subject
matter covered by the claims of the
patent. Patents do not grant the owner the right
to make, use, or sell what is covered by the
patent, only the right to prevent others from
making, using, or selling.
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TYPES OF PATENTS

• Design Patents Protect the ornamental aspects
  of a product
• Utility Patents Protect the useful or
  functional aspects of a product

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ELEMENTS OF DESIGN PATENTS

• Drawings showing the ornamental design to be
  covered by the patent
• Must be accurate
• Single claim to the ornamental design shown in
  the drawings

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ELEMENTS OF PROVISIONAL PATENT APPLICATIONS

• No particular form article, specification,
  simplified patent application (background an
  detailed description sections).
• Must be technically enabling, i.e. adequate to
  teach a person of ordinary skill in the relevant
  technology how to practice this invention.
• Must describe all limitations included in the
  claims of a subsequently filed utility
  application.
• May include one or more claims.

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ELEMENTS OF UTILITY PATENTS

• Specification, including drawings
• Must be adequate to teach a person of ordinary
  skill in the relevant technology how to practice
  the invention, i.e. make a working embodiment of
  the invention
• Must describe the best mode for carrying out the
  invention, usually the most recent version of the
  invention
• Claims
• Define the scope of patent coverage
• Patents usually include one or more independent
  claims and a series
  of dependent claims
• Independent claims should only include the
  essential elements of the invention

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PATENTABILITY REQUIRES THAT THE INVENTION BE
USEFUL, NOVEL, AND UNOBVIOUS

• Novel New or unique
• Unobvious Could the invention be readily deduced
  from publicly available information (prior art)
  by a person of ordinary skill in the relevant
  technology
• Prior Art The body of technological information
  against which novelty and unobviousness are
  judged primarily printed publications and
  products available to the public

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U.S. PATENT APPLICATION PROCESS (I)
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U.S. PATENT APPLICATION PROCESS (II)
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TRADEMARK DEFINITION
A trademark is a word, slogan, design, picture,
or any other symbol used to distinguish goods or
services.
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CLASSIFICATION OF TRADEMARKS

• Arbitrary or Fanciful marks
• Suggestive marks
• Descriptive marks
• Generic Marks

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ARBITRARY OR FANCIFUL MARKS
Ultimately become the strongest marks since,
initially, they have no relationship to the
related goods or service Xerox, Exxon, Amazon,
etc.
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SUGGESTIVE MARKS

• Less strong than Arbitrary or Fanciful marks
• Suggest, but do not describe, some aspect or
  feature of the related goods or service.

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DESCRIPTIVE MARKS

• Describe some aspect or feature of the related
  goods or services.
• Require significant period of exclusive use with
  the related goods or service (usually 5 years) to
  establish distinctiveness and become registrable.

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GENERIC MARKS

• Somewhat of a misnomer.
• Can never become a registrable trademark since by
  definition such marks are the generic name of
  the related product or service.