Day 5 Evening - Intellectual Property (Peter Kwa)

Lead to Win

d OTTAWA PATENT AGENCY INCORPORATED tand OTTAWA PATENT AGENCY INCORPORATED present…

Patents for Starting and Growing a BusinessAn Introduction to Patents for Inventors and Entrepreneurs

presented by: Peter Kwa, P.Eng., Dipl.‐Ing., United States and Canadian Patent Agent , ‘the patent guy’

AgendaAgenda

• What is a Patent ?• What is a Patent ?

• Who is an Inventor ?

Wh t b t t d ?• What can be patented ?

• Cost vs Benefit ‐ Patent For Starting a Business

f l f• Patent Portfolio for Growing a Business

• Summary

2© Ottawa Patent Agency Incorporated

What is a Patent ?What is a Patent ?

• protects your patented invention from being copied by your competitor

• protects your competitor’s patented invention from being copied by you– two sides of the patent coin

• exclusive rights for make, use, and sell– NO positive right to practice the patented inventionNO positive right to practice the patented invention

• patent protection on a per country basis• why is there a patent system at all?

quid pro quo bargain between patentee and public– quid pro quo bargain between patentee and public– give up trade secrets in exchange for monopoly rights– accelerates development of public know‐how


Who is an Inventor ?Who is an Inventor ?• Inventor

Conception of problem and sol tion– Conception of problem and solution– Reduction to practice

• Actual RTP = build prototype and make it work• Constructive RTP = file a patent application

• NOT an inventor– Verification engineer without more, however…– Manager suggesting problem to be solved, however…

M k t / t t i ht• Make sure entrepreneur/company owns patent rights– Inventor has inchoate rights– Clause in employment agreement/consultant contract: employee/consultant assigns or has

obligation to assign IP/patent rights (+ non‐competition clause)– Establish confidentiality program, need to knowEstablish confidentiality program, need to know– Prospective funders/buyers, exposure to industrial espionage

You can easily lose your patent rights File Early


What Can Be Patented ?(examples of patentable subject matter)

h d h d b• US: anything under the sun made by man…– Software, … other countries less liberal

• Improvement patentp p

• New Use of Old Things/Processes

••

You CAN Invent‐On‐Demandh // /i /di l dfhttp://www.ottawapatentagency.com/images/disclosure.pdf

patent to start patent portfolio to grow

© Ottawa Patent Agency Incorporated 5

What Can Be Patented ?(general considerations for invention disclosure)

• Quid pro Quo bargain between inventor and publicp g p– Quid (useful teachings that the inventors give to the public)

• Written description, drawings: inventor must show possession of invention• Enablement inventor must teach how to make, use invention• Teach ‘best mode’ as preferred embodiment(s) of the invention

– Quo (monopoly for the invention that the public gives to the inventor)– Quo (monopoly for the invention that the public gives to the inventor)• Claims: defines scope of monopoly [let patent agent do this part]

• Prior art– Search for closest prior art(s)

• http://ep.espacenet.com/ worldwide patent databasep // p p / p• http://patft.uspto.gov/ US• http://patents.ic.gc.ca/cipo/cpd/en/introduction.html Canada• http://www.wipo.int/pctdb/en/index.jsp PCT• http://www.wipo.int/patentscope/en/search/national_databases.html links to other national patent

databases– Differentiate invention from closest prior art– Difference must be inventive such that invention as a whole is non‐obvious to PHOSITA

Invention must be patentable


pover the closest prior art

What Can Be Patented?(sample invention disclosure to patent agent)

• Title of Invention, name of inventor(s), ( )• Written description: structure, function of the invention

– Drawings, flowcharts, block diagrams, etc. are often necessary to adequately describe the inventionbl k f h i i• Enablement: make, use of the invention

• Teach ‘best mode’ as preferred embodiment(s) of the invention• Describe (expected) most valuable commercial embodiment(s) of

th i ti t b t t d b th t tthe invention to be protected by the patent• Closest prior art(s)

– if known, provide a copy or a reference, a web link, etcif not known let patent agent conduct a search– if not known, let patent agent conduct a search

• What is believed to be the inventive step?– Describe how invention differs from closest prior art(s) in terms of ‘point

of invention’, ‘the lightbulb’, ‘flash of enlightment’, …g g


What can be patented ?(sample filing options for filing patent applications)

• US– Provisional to get a filing date– Non‐provisional within 1 year

C d• Canada– Convention filing within 1 year of the US provisional

• PCT (International Patent Application)PCT (International Patent Application)– Convention filing within 1 year of the US provisional– Enter target countries within 30 months of US provisional

• Time to evaluate market in target countries• Delay or avoid expenses• Delay or avoid expenses

– May be more economical than individual filings for 4 or more target countries

Start Here to Jumpstart Your Patenthttp://www.ottawapatentagency.com/jumpstart.htm


Important Gating IssuesImportant Gating Issues• What is a Patent ?

• Who is an Inventor ?• Who is an Inventor ?

• What can be patented ?

Do you have a patentable invention ?

Do you have the patent rights ?

Will your invention sell ?Will your invention sell ?

• Cost‐Benefit Analysis – Patents For Starting a Business

• Patent Portfolio for Growing a Business

• Summary


Cost‐Benefit Analysis of Patent / Patent PortfolioB fit…Benefits

• protects market niche; sell aspect of patent protection• protects market niche; sell aspect of patent protection• protects knowhow for providing product or service; make, use

aspects of patent protection• patents as bargaining chipspatents as bargaining chips

– stronger competitive position– stronger negotiating position

• generate revenues from royalties g y– patent portfolio as profit centre– financial recycling of patents for fuelling R&D

• protects investments in R&D – patents as insurance for future exploitation, time to market ‘bloom’

• defensive publication– prevents ‘blocking patent’ from competitor


Cost‐Benefit Analysis of Patent / Patent PortfolioC…Costs

• Cost of Procuring PatentsCost o ocu g ate ts– Approach as part of a funded R&D project

• Allocation for patent protection

• Cost of Managing Patent Portfolio – Approach as a budgeted item in business plan– Support business growth through patenting improvements or parallel product lines

• Litigating patents can be very expensive costs• Litigating patents can be very expensive, costs can vary very widely, can lead to spectacular settlements


Sample Result of Cost‐Benefit Analysis of Patent Portfoliop y

Ordered List of Benefits to Support YOUR Business Objectives

1. Defensive means

• Prevent competitor from using patented key component that p g p y penables a lucrative product

2. Offensive means

• Block roadmap of competitor with a blocking patent

3. Increase equity valuation for increased VC funding

What is the result of YOUR cost‐benefit analysis?


Patent Portfolio Management – Part 1Patent Portfolio Management Part 1

New Invention disclosure

P R i C i

has won us anAward of Excellence

Patent Review Committee

Prioritization by CTORecommendations to Part 2Prioritization by CTO

Patent Review Committeei t t tf lireviews patent portfolio

against business objectives

“Your In‐House Patent Department”


Patent Portfolio Management – Part 2Patent Portfolio Management Part 2

S hi d D ftifrom Part 1

Searching and Drafting

Filing the Patent Application

You can now mark your product with ‘Patent Pending’ !

P t t P tiPatent Prosecution

Patent Grant

You can now mark your product with ‘Patented’ !


Patent Portfolio Management – Part 3Sample Timeline for Procuring a Patent

months‐1 0 12 18 30 36 40

months


SummarySummary

• Establish Value of Patent / Patent Portfolio for Company / Inventor– Approach procurement of a patent as a funded project– Approach patent portfolio as a budgeted item of a business plan

• Establish Patent Review Committee for Managing Patent Portfolio– “Your In‐House Patent Department”– Your In‐House Patent Department– Put CTO in the driver’s seat

Thank You!Thank You!

More information is available at http://www.ottawapatentagency.com


or Jumpstart Your Patent http://www.ottawapatentagency.com/jumpstart.htm

presents…

How to Draft an Invention Disclosurefor Your Patent Agent

Peter Kwa, P.Eng., Dipl.‐Ing., United States and Canadian Patent Agent

President of Ottawa Patent Agency Incorporated ‘the patent guy’President of Ottawa Patent Agency Incorporated, the patent guy

SAMPLE INVENTION DISCLOSURE

1

• Title of invention: Rain Dance Robot• Inventor: Bushman Monk (you)• Draw your robot with lead lines and reference numerals1

11

• Draw your robot with lead lines and reference numerals, use spaced apart numerals such as odd numbers 1, 3, 5 … so that you can add reference numerals for hands, feet … without renumbering

9

11• Write down the children’s song Dem Bones: bone 1 connects to bone 3 connects to bone 5 … leads to structure to achieve the various functions (written description)• Write down how you let your robot dance the rain dance

3

Write down how you let your robot dance the rain dance for a rich patent harvest (enablement)• Make sure you describe your best robot for the richest patent harvest (best mode)

b ( d) b ll b f

57

• Describe your (expected) best selling robot for protection by the patent• Closest prior art: Walking Robot by Robert Walk• Inventive step: dance style for making rain (describe and


p y g (illustrate)

The Ideal ‘Table of Content’of invention disclosure to patent agent

• Title of Invention, name of inventor(s)Title of Invention, name of inventor(s)• Written description: structure and function of the invention

– Drawings, flowcharts, block diagrams, etc. are often necessary to adequately describe the invention

E bl t t h h t k th i ti ll th i t• Enablement: teach how to make, use the invention as well as the inventor himself could (best mode), teach best mode as preferred embodiment(s) of the invention

• Describe the (expected) most valuable commercial embodiment(s) of the ( p ) ( )invention for protection by the patent

• Closest prior art(s)– if known, provide a copy, a reference, a web link, etc

if not known let patent agent conduct a search– if not known, let patent agent conduct a search• What is believed to be the inventive step?

– Describe how invention differs from closest prior art(s) in terms of ‘point of invention’, ‘the lightbulb’, ‘flash of enlightenment’, …


Prior Art and Inventive StepPrior Art and Inventive Step• Search for closest prior art(s)

– http://ep.espacenet.com/ worldwide patent database– http://patft.uspto.gov/ US– http://patents.ic.gc.ca/cipo/cpd/en/introduction.html Canada– http://www.wipo.int/pctdb/en/index.jsp PCT– http://www.wipo.int/patentscope/en/search/national_databases.html links to

other national patent databases

• Anything can be prior art: publications in trade journals, products in the marketplacein the marketplace, …

• Differentiate invention from closest prior art(s)• Difference must be inventive such that invention as a whole is

non‐obvious to PHOSITA, a person having ordinary skill in the art, p g y

Invention has to be patentableover the closest prior art(s)


over the closest prior art(s)

Transmitting the Invention Disclosure to Patent Agent

• email: attach invention disclosure in MS Word WordPerfect• email: attach invention disclosure in MS Word, WordPerfect, … (any common file formats)

• Fax:– faxed drawings are often of inadequate quality, may have to be redone

by draftsman

– email drawings.pdf or similar file if you have scanning ability, or mail g p y g y,drawings separately by postal mail

• Postal maill ibl f j t b t thi– always possible for just about anything

all of our contact options are posted athtt // tt t t / t t ht


http://www.ottawapatentagency.com/contact.htm

Problems Drafting the Invention Disclosure?Problems Drafting the Invention Disclosure?

• VERY common problem, general guidance is available– http://www.ottawapatentagency.com/images/inventor.pdf

– http://www.ottawapatentagency.com/images/cto.pdf

• Send us a rough draft and drawings as well as you can muster• Send us a rough draft and drawings as well as you can muster

• Call us at +1‐613‐592‐0637 – after we have had an opportunity to look at the rough draft and

drawings

– we will draw out the necessary information from the inventor(s)

• We don’t charge for initial consultationsWe don t charge for initial consultations– We are passionate about inventions and patents, and have genuine

fun talking about them even when we sometimes don’t earn money for the time spentfor the time spent
