Take-aways from a talk in the Trust Center on 7/7/16
Protect your assets: Patents, Copyrights, Trademarks, Trade Secret
- A patent is a property
- Just like real (i.e house) and personal (i.e laptop, car) properties, a patent is a property of your ideas and is treated like a property: you can assign / sell /lease /mortgage it…
- Unlike with real property, you are responsible for defining your intellectual property. If you describe it wrong, the court can’t fix / redefine it for you.
- Three conditions of patentability - novel, non-obvious, useful
- Patents’ structure:
- First page
- Patent number and date of patent (date of issue) - This date has lost its significance: in the past, patents expired 7 years from the date of issue. Today, patents only expire 20 years from the day of filing.
- Abstract - what the inventor believed the patent was the day he filled it. This abstract does not represent the actual patent, which is only defined after an evaluation of a patent examiner (and many time followed by a negotiation process with the inventor).
- Patents claims
- The very last paragraph of the patent but the most important part- this should be your focus when reviewing with a patent lawyer.
- The result of the negotiation with the patent office examiner - this is the real patent.
- Must be written as one sentence.
- Make sure your definition is well balanced: broad enough to make it hard for others to work around it, but not too broad so it’s not perceived as public knowledge.
- It’s about the invention, not the product - so make sure you’re first!
- It doesn't matter how long you worked on your invention. It matters whether you filed it first so make sure you file your patent before others do.
- You don’t have to build a product to file the patent. You need to be able to describe it in enough details to demonstrate your ability to build it in the future.
- It doesn’t have to be perfect- as you improve, you can always add more original ideas to your patent.
- You don’t have to invent a new technology. Your invention can also be a combination of existing technologies in a way that is innovative. (If you rely on others’ inventions though, you will probably need to license from / cross-patent /partner with others to execute)
- Provisional patent application:
- You only get a grace period of 1 year to publically test your product in the market before you file a patent. If it’s public for more than 1 year in the US, it is no longer considered “novel”.
- If you plan to publically disclose something ahead of time, you should put a provisional patent application. This is a way for you to put your patent “out there” and work around the public disclosure.
- Copyrights, trade secret and trademark -
- The expression of the idea not the idea itself.
- Example: sport games - the video of the game is protected by copyrights but the actual game isn’t. Same with music.
- Software code is protected but algorithms are not - algorithm are the idea. The code is the expression of it.
- Open source code - in this case, the publishers say they are not going to enforce the copyrights if people copy their code as long as they treat it as open source.
- Pay attention to what you chose to hear/ disclose. If you don’t want others to copy your secrets, don’t disclose them to begin with. And the other way around- don’t listen/ read if you don’t want to be accused of copying.
- This is very important for first mover advantage. Building your brand could make/break your market penetration. For example: pharmaceutical companies charge higher and own greater market share if they’re first to market even though there are identical copycat drugs out there.
- ™ and © are “guilt symbols” - If someone copies your exact logo/ brand they violate copyrights/ trademark even if you didn’t use the symbols. These rights exist on use.