NYU Startup School - Intellectual Property Fundamentals

IP fundamentals for
Entrepreneurs
Dee Dao, PhD
Associate
Innovation Venture Fund

Topics
u What is intellectual property (IP)?
u What are the different types of IP?
u What is considered as IP?
u Where do you go for help?
u What resources are available?

Can you identify different types of
intellectual property (IP) ?

IP identified
Carton spout
Telephone
Mouse
LCD monitor
Staple
iPhone
Key board
NYU
logo
Boxed Water is Better
Apple
logo

Questions
u What should I think about as I’m planning?
o Know the different types of IP
o Know that a suite of IP is often used to protect
your product or services
o Identify where is there IP in your
product/services
o Look at your startup product and services and
ask yourself what IP strategy would support my
business strategy today and in the long term

What are the different types of IP?
6
Types of IP What is protectable? Examples
Trademark Brand (ie… drug
names)
Marks, Logos,
slogans
Copyright Creative expressions
of the idea, not the
underlying ideas
Software, songs,
website content
Trade Secrets Secrets with
economic value
Things that are not
sold:
- customer lists
- manufacturing
- formula
- algorithm
Contract, NDA As defined in the
contract
Discoveries, results
Patent Designs, Inventions New technology or
designs

What are the IPs in the Smart Phone?
u Trademark
u Utility Patents
u Copyrights
u Trade Secret
u Design Patent
7

What are the IPs associated with Coke?
u Trademarks
u Copyrights
u Utility Patents
u Trade Secrets
u Design Patents
8

The Origins of Patent & Copyright Law
o “To promote the Progress of Science and useful Arts, by
securing for limited Times to Authors and Inventors the
exclusive Right to their respective Writings and Discoveries.”
o First US Patent, July 31, 1790
Inventor: Samuel Hopkins
“Improvement in the Making Pot
Ash and Pearl Ash by a new
Apparatus and Process."
Article I, Section 8, Clause 8 of the US Constitution, empowers Congress:

Why get a Patent?
Barriers:
o Protect from direct copy or a space in the
market for your product
o Deter others from entry into your market
o Assert/enforce rights against an infringer or
competitor
Assets:
o Revenue source – through licensing or sale
o Asset for early stage startup
10

What’s patentable?
Broadly speaking: “… any novel, useful, non-
obvious process, machine, manufacturing, or
composition of matter or any novel, useful,
non-obvious improvement thereof”
u Work with counsel to figure out the details

What’s NOT patentable?
u An idea or concept that has not been
reduced to practice
u A pure mathematical formula
u Phenomena of nature

Types of Patents
u Utility: processes, machine, article of
manufacture or composition of matter or
any new and useful improvement thereof
o ie … Products and how it is used or
manufactured
u Design: new, original and ornamental
design
o ie… how something looks

What is Freedom to Operate?
16
Freedom to Operate (FTO):
The ability of your startup to develop,
to make and to market product or
services without legal liabilities to other
patent holders.

Patent vs. Freedom to Operate
17
- ABC Startup’s Patent
Application for new door handle
design:
ü Novel and Non-Obvious
ü Enabled
- Patent Issues! ABC can exclude
anyone else from making or
selling this door handle
The lock happens to be
patented by XYZ Inc.But…
Product: A door handle with a lock

How can FTO analysis help avoid
common mistakes of founders?
u Common mistakes:
o Ignoring the competitor’s portfolio
o Failing to in license key patents
o Failing to conduct trademark searches
18

IP strategy & Considerations for
Start-ups:
u IP strategy should support long-term
product development goals
u Value of any given patent is not absolute,
but relative to a competitor’s patent filings
19

Innovation Harvesting
u Determine the type of IP protection you
need
o Trade Secret, Utility/Design Patent, Trademark,
Copyrights
u Determine if your invention is patentable
o Prior art searches
o Patent searches
20

Prior Art Search
u Determine whether your technology has
been disclosed
u Determine whether a design around effort
is needed
u Help decide the value in filling
u Informs patent strategy
21

Prior Art Searches
u Search Web of Science engine
o Literature
o Manuscript
o News
u Search Google Patent: database is about year
behind, mostly US centric
o Insight into who filed on that idea
o Granted patents
u Search Patent Lens: Gives you families of patents
o Additional info from google patent search
§ Provides info about which countries the patent is filed
22

Key Questions to ask when
establishing an IP strategy
u Who owns the background technology in your space?
u How rapidly is new innovation taking place in your space?
u Where are the opportunities for strategic growth, investment
or licensing within your field?
u Where are the new and emerging technologies being
developed in your space?
u Which patents are the most valuable for your products?
u Is there a business case for this filing?
23

IP strategy considerations
u When should you file?
o File before you talk/present your work publicly,
o Before selling
o US is a First Inventor to File System
o Only get US protection
§ If the inventor files within 1 year of public disclosure
u Looking for international protection?
o File before public disclosure
u Do you have FTO?
u Work with counsel on
o Should you file both blocking and defensive patents?
o Are broad protections available?
o Is narrow protection the only option?
24

Patent Filing Fees
(~ $50,000 – > $500,000)
u Step 1: Initial Filing (Provisional Or Non-Provisional Application):
u $15K – 50K
u Step 2a: 1 Year – Non-Provisional and/or PCT: $6K – 15K
u Step 2b: “nationalizing” PCT International Application $25K – 250K
u Step 3: 1-5 Years – US Prosecution, Office Actions &
Amendments/Responses: $10K – 50K+
u Step 4: US Patent Allowance & Issuance: $1K
u Step 5: Maintenance Fees at 4, 8, 12 years: $1K - 3K+
u Step 6: Continuation and Divisional Applications: $10K – 50K+
u Step 7: 2.5 Years – Foreign National Stage (EPO, Canada, Japan,
China, India, etc.): $10 - 50K+
u Step 8: Foreign Prosecution, Allowance, Maintenance: $50K - $250K+

Questions
u Where do I go for help
o Office of Industrial Liason
o Counsel with expertise prosecuting patents in
your space

NYU Office of Industrial Liason
u If you are working on projects that are
funded with federal grants OR use NYU
resources
o file an invention disclosure form with OIL
u If you would like to learn more about IP
policy at NYU, contact OIL

Lesson Learned
Patenting should be
business driven, to claim
something commercially
viable and having
economic value
29

30
http://www.wipo.int/edocs/pubdocs/en/intproperty/450/wipo_pub_450.pdf
More general info about trademark, copyright, and patent
Deep dive into Patenting process

Welcome the opportunity to
talk with YOU about your
research & startup ideas!
dee.dao@nyu.edu
@nyuentrepreneur
entrepreneur.nyu.edu
16 Washington Place
31

NYU Startup School - Intellectual Property Fundamentals

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