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Tip#1: IP Tips for Startups

3 Things You Should Know About IP

Intellectual Property

What is it? Intellectual Property (IP) is a term which includes patents, designs, trademarks and copyright. It is the main asset of many companies and certainly of most start-ups and relates to the rights surrounding technology or knowledge owned by them.

Why is it important?  Virtually all the assets of a start-up or of a new project within a mature company emanate from the knowledge on which the start-up or project is based. Establishing ownership of these knowledge-based assets is crucial to the development of the company.

When should we start registering our IP rights?

For patents, the short answer is: “before your competitor “. For a technology or medical device company, this means that for each invention you should start the patenting process as soon as you are able explain to another person how your invention works. For a life sciences company, where tests are required to prove that the invention works, you should start consulting with a Patent Attorney as soon as you can explain the science, define the tests you plan on carrying out and the results you expect.

For design registration, you must register before advertising the product.

For trademark registration, there is no set time. However, experience teaches that if you have a trademark that you want to keep, apply to register it before you disclose it. (Note that this is a practical, not legal requirement) If your mark is attractive to you, it will be attractive to others too. And if you don’t register it, someone else will.

JMB’s extra Q&A:

Q: On occasion, I’ve been told by an entrepreneur that he doesn’t really believe in IP, but he’s ‘doing it’ because his investors want it. If I don’t believe in IP, then isn’t it a waste of money?

A: The objective need to obtain IP assets for your company is not a matter of belief. It’s very practical. It is important to investors, partners, potential customers and competitors. A technology company without IP rights may be technology rich, but will be fortunate indeed to become a commercial success.

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!

Tip#2: IP Tips for Startups

3 Things You Should Know About Public Disclosure

Note: This is the second in a series on IP for Startups. To view previous articles please click here.

Public Disclosure

What is it?  Divulging knowledge to a third party who is not obliged to maintain the secrecy of the knowledge. This can be done by posting information on Facebook®, Twitter®, LinkedIn® or via other social media; by launching a crowdfunding campaign such as Kickstarter®, by posting information on any website, in any form whatsoever. This also occurs when sending information to potential service providers to obtain cost estimates or the like.

Why is it important?  Knowledge is power. Providing knowledge to someone who could potentially use this knowledge for his or her own benefit is giving your power away. It can also make it impossible for you to obtain patent protection for an invention which has been disclosed, unless a fully drafted patent application has been filed before public disclosure of the invention. An exception to this rule is in the United States, which provides a limited grace period of one year following the date of public disclosure during which a  patent application can still be filed without harm from the disclosure.

When can we publicly disclose information relating to our invention? In order not to risk your ability to patent your invention, any disclosure should be made only after a first fully drafted patent application has been filed so as to establish priority rights under the Paris Convention. Even then, bearing in mind that knowledge is power and having a patent application does not give the right to take legal action against an infringer (this can be done only after the patent has been registered), you should be careful how you disclose the information.

JMB’s extra Q&A:

Q:  Why do you keep mentioning a “fully drafted” patent application? I’ve heard that a Provisional application can be filed in the US Patent Office, and that it will give you a “priority right”, so why can’t I just go online and file a Provisional application that I have written?

A:  You can write and file your own Provisional application, but that would be a bad idea. The reason that you need a fully drafted patent application is that your priority right is only as good as what you describe and show in the first application. If you make mistakes, miss out important features or try and describe them in a way which is unacceptable according to the relevant law and rules which govern what needs to be in a patent application, those mistakes cannot be corrected. So, if you file a first application which has not been drafted by a Patent Attorney (and will therefore almost certainly not be fully or properly drafted), and then publicly disclose your invention, you may also have given away your ability to patent your invention.

NB:  Even if your application is fully drafted, you must not disclose an extension of your idea without first filing a new application for it as, by definition, it will not have been included in your original application.

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!

 

 

Tip#3: IP Tips for Startups

3 Things You Should Know About Secrecy Agreement

Note: This is the third in a series on IP for Startups. To view previous articles please click here.

Secrecy Agreement

What is it? Also known as a Non-Disclosure Agreement (NDA), a secrecy agreement is an agreement that is signed by someone who is interested in receiving confidential information, e.g. an entrepreneur.

Why is it important? Any time that you want to disclose secret information to someone else, for example a supplier, designer or potential partner, their signature on a secrecy agreement obliges them to keep your information secret, and your disclosure to them is not considered to be a public disclosure of that information. Theoretically, this provides you with limited protection even before you have filed a first patent application. Because of its importance, and the fact that every case is specific, it should be drafted by a lawyer who has experience in IP matters. It is not advisable to use a boilerplate NDA downloaded from the Internet.

When should I use a Secrecy Agreement?  It should be used prior to any disclosure of confidential information to a third party who is not otherwise required to keep your information confidential.

HOWEVER, in practice, it is not advisable to rely on an NDA prior to filing a first patent application. If the person receiving the information breaches the NDA that he has signed, the owner of the secret knowledge merely has the right to sue him for damages. However, in most circumstances even public disclosure which is in breach of an NDA will still make it impossible to obtain a patent if an application was not filed before disclosing the secret information.

JMB’s extra Q&A:

Q:  Sometimes you feel like you have no choice. You can’t file a patent application, yet you can’t rely on an NDA. So what can you do?

A:  Not having a choice’ normally means one of a several situations: (i) there’s no money to pay for a patent application to be fully drafted, and you need to disclose the invention to a potential investor; (ii) you have the money, but don’t want to spend it until you have received feedback from others in the market that your idea is a good one; (iii) you don’t know how to build your invention, and you need the input of a professional so as to help you.

If the only thing you can do before you’re able or willing to file a patent application is to rely on an NDA, try to ensure that the person to whom you’re about to tell your secrets is someone that you would trust even if they just gave you their word (they should still sign though). If there’s no one like that that available, try to get a recommendation from someone that you trust as to the reliability and trustworthiness of the potential inventor, engineer or design company that you plan to speak to.

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!

 

 

Tip#4: IP Tips for Startups

Note: This is the fourth in a series on IP for Startups. To view previous articles please click here.

3 Things You Should Know About Your Inventions

What is a Patentable Invention? An invention is a method or device, composition, system, process or method that is novel, inventive and useful, in a technology that is considered patentable (also known as patent eligible).

But what is a good invention for your business? That’s simple. If your invention is a business bottleneck or technological junction, then it’s worthwhile patenting. In other words, if your competitors need your patented invention in order to develop their own technology and/or in order to compete with you effectively, then it’s valuable to your business. By definition, a worthwhile patent will give you ownership of that bottleneck and control of that technological junction.

When do I need to evaluate my inventions and potential patents? The short answer is ‘from the beginning and every day after that’. The slightly longer version is that all patents are date stamped, i.e. you decide when to file a patent application. So while it is true that patents also have an expiry date, it’s also a first come, first served system, meaning that the sooner you file a patent application, the more likely you are to beat your competitors in filing a patent application for the same invention. Equally important is that to be patentable, your invention needs to be sufficiently ‘inventive’ when compared to the ‘state of the art.’ That means that even if no one else has already filed a patent application for the same or similar invention, any publicly available information, including posted digital content, or in magazines, newspapers, and press releases, anywhere in the world, can be used by patent examiners to reject a patent application or by a Court to invalidate a granted patent. You can’t prevent those publications. But you can decide when to file a patent application. As we said: it’s first come, first served!

JMB’s extra Q&A:

I’m still not sure when I should file a patent application. I don’t even know if I have a patentable invention. All I’ve done is combine several known devices and components; is that enough for a patent?

There is no requirement to invent any new components so as to qualify for a patent. In fact, many patents have no new components whatsoever. What is required, however, is to have a new result, a significantly improved device or system, or a method or process that works better than the closest method or process, even if all you have done is to leave out some steps or change their order (if you’re talking about a method or process). If you are satisfied that you have reached such an improvement and you can explain this in writing based on facts or realistic, science-based conclusions, you may have enough for a patent. What you then need is to find a Patent Attorney and see if he or she agrees with you.

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!

Tip#1: US Patent Practice Tips

Where to start?  With questions of course!

Getting a good patent depends both on what is in the patent application and also how it is written.  Getting the what right might be obvious, but getting the how right can save not only headaches, but huge amounts of time and money.  So this space, which over the coming months will be devoted to suggestions and strategies for US patenting, will sometimes be devoted to the what (e.g. patentability, invention disclosure, etc…) and sometimes to the how (e.g. USPTO formal requirements, initiatives, etc..).

But before we dive into the ‘whats’ and ‘hows’ of US patent practice, I’d like to ask other, even more basic, questions:

  1. Why do you want to get a US patent? What do you think you will gain from it? Will it help you to actively exclude others from your technology space so that you can proceed in the US market without competition? Will it help you to attract investment?More than just the importance of self-awareness, your goals (or your client’s) will also drive your decisions during application preparation and examination.
  1. Can your type of technology be patented in 2017? And do you care? It (still) cannot be said enough: Fewer types of technology are patent-eligible in the US today than were just a few years ago. So before you file a patent application in the US, it is well worth considering whether a patent is even possible.  But despite the difficult outlook for certain technologies such as medical diagnostics, software, and isolated biological materials, you or your client may not actually care about eligibility fights (see question #1).  If the value of a patent application is its pending status; or the creation of prior art to prevent others from registering their own patents in your area, then current patent eligibility challenges may not matter.

So do you still want a US patent? Then come along, and together we can hopefully answer the ‘what’ and ‘how’ questions, and make your patenting experience more successful, and less difficult.

Looking to the next tip: What do you mean I can’t patent my new app?!

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!

The Annual INTA Meeting – All that’s Right with Multiculturalism

A moment before returning to the frenetic activities of business as usual, it is worthwhile considering an aspect of the annual INTA meeting that is so much more important, in my opinion, than all of the IP-related activities pursued during this year’s annual meeting in the beautiful city of Barcelona.

When asked to describe the INTA meeting, my tongue in cheek description of this annual event is that is “an opportunity to spend a few days of quality time with 10,000 of my closest friends.”

On reflection, this may not be so far from the truth.  I am an Israeli and a traditional Jew, and as on all my international travels, proudly wear our traditional head covering, the “kipa” or “yarmulke”. For some of my friends and colleagues attending the conference, it has become an advertisement of my Israeli/Jewish identity; and for others, I suspect that is somewhat bemuses them, as I stop and talk to them to have a brief conversation that perhaps they were not expecting. Yet others look right through it, it being no different to the gallabiyah worn by a few, or the lederhosen worn by one of my German friends, and being irrelevant to conducting civilized discourse, as it should be.

US Practice Tip #2: Patent Eligibility: It all begins (and may end) here

Note: Our second tip in a series. To view previous articles please click here.

Patents are an invention of society . It goes like this: you have new technology, the public wants it, and to get you to tell us about it, society (through enacting laws) invented a time-limited monopoly that we call a patent! It sounds simple, except here’s the catch: because patents are society‘s invention, society gets to decide which inventions it wants and considers to be deserving of a patent. This is known as “patent-eligibility”.

In the US, the issue of eligibility has developed over the last few years into a critical problem for technologies in certain fields. But is this something you need to worry about?

That depends: Is your technology related to software (including mobile apps), business methods, isolated biological materials, or medical diagnostic methods? If the answer is “yes”, stay with me for a few more minutes; it might save you time, money, and years (not to mention tears) of frustration. Here are three basic tips:

Recognize that a problem exists. Your app may do fantastic things across our interconnected world. You may have discovered a new way to diagnose a disease that until now had been beyond detection. You might be saving lives with a newly-discovered and purified phytochemical. But none of these things will make an invention patent-eligible if it does not meet the USPTO’s standard, which cares nothing for hard work or elegant experimental design.

Talk to your US patent attorney – early! You know your invention better than anyone, but your patent attorney (or her US colleague) can help determine if your technology may have problems meeting the current US patent eligibility standards. These issues are best discussed before a patent application is written. It may be that there is no eligibility problem. It may be that there is a problem, but your patent attorney can describe and claim your invention in a way which will make all the difference. Or it may be that with a bit more time in Research and Development, your technology can gain the technical features it will need to meet the current US standards. But these are issues to discuss and consider early, not the day before you need to file a patent application. 

Be flexible. Be open to a range of IP strategies. Not ALL aspects of your technology may be US patent-eligible, but other not-so-obvious sides to your invention might be, and can still result in your receiving a valuable patent.

And lastly – don’t forget that patents are not the only types of IP relevant to your business! Trade secrets, trademarks and designs are all ways to gain market advantage and keep value for you and your investors.

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!

Introducing Timelines for IP Prosecution in Israel

“Time is money” is a well-known quote attributed to Benjamin Franklin. Apart from being one of the Founding Fathers of the USA, he would have been quite at home in today’s startup scene, being, among other things, a famous inventor.

Another, less well known quote, attributed to the American author Ray Cummings, is “Time is what keeps everything from happening at once.” And while many of us in the IP profession would argue that it is Examiners (whether patent or trademark) who keep everything from happening at once, it is, regardless, useful to know when to expect the commencement of examination, terms for response, availability of extensions, and, ultimately, the expected time until allowance and registration of patents, designs and trademarks.

And this is especially so in a jurisdiction such as Israel, in which only a relatively small number of applications are filed and thus what happens on the way to registration is less well known than many other more popular jurisdictions such as the US, Europe, China and Japan.

There are various reasons why Israel is less sought after as an IP destination than other countries. Even though Israel has one of the strongest and most dynamic R&D bases in the world, and attracts significantly more venture capital investment per capita than other countries, these statistics generally inform the technology export-related indicators. You will therefore see a relatively large number of US patents registered to Israelis, and a very large number of Israeli technology companies trading on the NASDAQ (4th after the US, Canada and China).

In terms of the number of domestic and incoming IP registrations however, this is governed primarily by the size of the country (about 8.5 million) and the consequent size of the market; and this is why the infrequent patent or trademark filer in Israel remains unfamiliar with how these applications are prosecuted. And this is why we feel that our timeline pages for patentsdesigns and trademarks will be of value.

There is clearly much more to know about IP prosecution in Israel, and I invite you to peruse our website and write to me directly if you should have any questions about prosecution in Israel, or indeed, about any of the services we provide.

From the Desk of JMB: Heading for the Nearest Brexit? An optimistic view of IP in the UK

Following a short visit to the UK with Dr. Mike Hammer, head of our US practice, I can safely say that Her Majesty’s IP economy is not merely alive and kicking, but full of opportunities. Some may say that this is due to the implications of Brexit, while others may say that this is despite them. But there they are, nonetheless, and I will try to relate to those that as a visitor, I have identified.

  • Exchange rate fluctuations
  • Patent Box advantages
  • GB and DE and GPPH
  • Design and Trademark – separation anxiety
  • The rediscovery of the UK

Let’s start at the beginning.

From the China Desk of JMB: Celebrating The Year of the Rooster (Every Crowd Cloud has a Silver Lining)

The new Chinese year is the Year of the Rooster. As we move away from the western new year celebrations, I would like to congratulate the Chinese entrepreneur, wherever he or she may be. It’s easy to tell when the Chinese entrepreneur is doing something right –  all you need to do is to look at the faces of their counterparts in the West; they’re green with envy. I have no other explanation than that of pure envy for the myriad entrepreneurs or would-be entrepreneurs in the West and their cries of ‘foul’ in response to the Chinese copying of products from public postings on the internet.