Trademarks and Patents with Attorney Andrea H. Evans Esq.

By:  Courtney BenischMarch 

The inventing process can be a challenge. Some steps are easier to work through, some not so much. One of the common mistakes inventors make is at the patent and trademark stage. It’s a crucial step in the inventing process but one that’s difficult to understand if you’re new to the inventing world.

Andrea Evans, who participated on season 2 of Make48, is a patent attorney at The Law Firm Of Andrea Hence Evans. After graduating from law school, Evans worked at the USPTO (United States Patent & Trademark Office) as both a patent examiner and trademark examining attorney. It was there after listening to stories from inventors and entrepreneurs, that she felt compelled to open her firm. Evans is extremely passionate about educating her clients about protecting and enforcing their intellectual property. We asked her some questions on what inventors need to know about patents and trademarks.

Patents and trademarks are terms that are often used interchangeably. In intellectual property terms to distinguish between the two, inventors can patent processes, machines, compositions of matter and any improvements of any of these provided the invention is useful, novel and non-obvious. Trademarks protect any words, phrases, logos or other devices to identify the source of goods or services. To put it simply, patents protect inventions and trademarks protect brands. For example “One would patent a television and trademark, Sony.”

The Filing Process

If you’re not familiar with the filing process there are several resources to help. Evans told us that there are several free videos and articles on It’s also not required to hire a qualified patent attorney but it is highly recommended for inventors to help them fully understand their options. “Inventors that file pro-se (without an attorney) risk not providing enough information in their application, which can hurt them in the long run.” It’s also beneficial to the inventor to ensure that they have a concept and can describe the invention as having an idea. Research if the idea is patentable and then consult an attorney.

Once the application is filed, be aware that the USPTO is backlogged. It can take 2-3 years for a patent application to be assigned to a patent examiner. “Because of the nature of the examination process, most patent applications are rejected with prior-art. The inventor is given an opportunity to amend their application to overcome the rejection.”

In order for a trademark to be granted, it is “required that the application use the mark in interstate commerce.” 2-3 months after filing the trademark application it is assigned to a trademark attorney. If there are no issues with the application the trademark can be received in 12-18 months. If you’re rejected by the USPTO, it’s important to consult an attorney to help prepare a response. Most rejections can be avoided with proper research before filing.

For companies and individuals alike, knowing what to file and how to file for a patent and trademark can be tricky. Filing your idea and/or product can be a long process but it can be longer if there are mistakes on the way. Patience, persistence, and perseverance will help keep you on your path.  Visit The Law Firm of Andrea Hence Evans, LLC or the USPTO for additional information on filing for a patent or trademark.



By: Norman Medi

1) What is an Intellectual Property?

Intellectual property also known as IP is a category that contains certain properties that refer to the creations of the mind, inventions, literary and artistic works, trade secrets, and symbols, names, and images used in commerce. Intellectual property (IP) can be divided into two large categories as described below.

2) Types of intellectual property (IP):

Intellectual Property (IP) can also be divided into two classes, these two classes are:

2.1) Industrial Property:

 Patent:

A patent is a form of an exclusive right granted by the government to an inventor for an invention of a product or process that provides a new way of doing something, or that offers a new technical solution to a problem. Giving the owner the right to exclude others from making or using or selling or importing the invention for a limited period of time.

Here are some few examples of Patents:

– C Pen (Pen with a scanner):

This is a machine that is as small as a pen, and users can transfer a text from a paper directly into the computer. Christer Fåhraeus is the inventor of the C pen. The first model was launched in 1998 and it is still being in development until this day.

– Steel kidneys (a dialysis machine):

In 1946, after receiving a grant from the state a doctor in Lund named Nils Alwall, began developing a dialysis machine for people that are suffering from kidney diseases. Just over twenty years later, his new invention started to be mass produced.

– Three-point seat belt:

Nils Bohlin invented a lifesaving invention, he invented a three-point belt, according to Volvo’s study, and this invention was responsible for the saving of hundreds of thousands of lives. This Belt was much safer and comfortable than the older ones. In 1985, Nils Bohlin’s three-point seat belt was awarded a prize by the West German patent authority for being one of the most practical and beneficial to the general public.


A New Startup Business: What Is Needed For Success

By: Michael J Foycik Jr. 
June 22, 2016
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

So you're starting a new business, congratulations! The sky's the limit. If your new startup business is based on a new idea, a new concept, or a new invention, then you'll need something first.

What will you need for success? At least one thing: something unique that you own. The key word here is “own” and that includes intellectual property: patent rights, trademark rights, copyright rights, and trade secret rights. Otherwise, your initial success can be copied or taken by anyone.

You should have a pending application of some type. That is, unless you already have an issued patent or a registered trademark, though a startup is unlikely to have either one. What you can have is a pending application: a pending patent application, a pending trademark application, or both. For some businesses, a copyright application is needed instead of, or in addition to, a patent application.

A pending application documents ownership, as of the filing date. For patent applications, the law now is first-to-file. If you wait to file a patent application, anyone can take your idea and file on it. So be the first! If you are first, then your rights are documented by the filing of the application.

Costs can be kept fairly low on the patent side by filing a provisional patent application (PPA), which gives true patent pending rights for one year, which can give priority rights for any later filed utility patent application. The PPA also documents trade secret rights when the subject matter is kept confidential, and such rights can be valuable.


Protecting Your Patent And Intellectual Property In The Chinese Market

By: lawyeradmin

The increase in globalization has given rise to new opportunities for many industrious business owners looking to expand their business into new international markets. For business owners, each new market comes with a renewed opportunity to continue growing in a previously untapped arena.

As advantageous as expanding into international markets can be for business owners, doing so comes with a set of inherent risks that many are not prepared to take on.

Protecting Your IP and Patent Abroad…

It is widely known within the United States, that patents, trademarks and copyrights are used to discourage illegal copying, infringement, and counterfeiting. While cases that involve infringement have a tendency to lead to lengthy court cases, for the most part the basic protection provided by strong intellectual property ensures a company’s investments in research and development, branding, and other assets are safe.

But for many business owners entering the international market for the first time, the intricacies of ensuring your patent and intellectual property are protected across national borders can be difficult to take on without first consulting legal representation.

The very first point of difference…

The main issue in protecting your patent within the United States and preventing infringement abroad is that the international community does not recognize patents filed within the United States, with a few exceptions.

This means that a business owner is required to file a separate copyright or patent claim within the country they wish to expand into, otherwise they risk opening themselves up to potential cases of infringement without any legal protections. Several international treaties signed amongst most countries in the world have made it easier to file patents and register intellectual property for foreign nationals entering international markets.

Filing a Patent in China and Protecting Your IP from Infringement…

For those wishing to enter one of the strongest global economies in the world and expand business into China’s vast markets, it is necessary to file an application for a patent with China’s State Intellectual Property Office, or SIPO. Before an application can be filed in China, however, United States Citizens must file for a patent with the United States Patent & Trademark Office.  In addition, as with the United States, there are different types of patents in China.  In particular, applications for Chinese patents fall into three distinct categories: 1) invention patents, 2) utility model patents, and 3) design patents. It is essential to know and understand the basics of a particular category a patent will fall under before filing as each comes with a set of procedures used to determine legitimacy of an application.


Now is the Time to Consider an EPO Patent Application for Coverage in European Union Countries

By: Michael J Foycik Jr. 
August 6, 2014 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

Thinking of foreign patents? Then its time to consider an EU (European) patent application!

Why now? Because the EU law is transitioning toward a single filing to cover all of the subscribing EU member countries.

Applications filed now are said to be covered by the new law when it changes, likely in 2015 or 2016. Such an application is examined, and if granted provides patent protection in all subscribing EU countries. The filing can be in any EU language, which includes English, removing the need for expensive translations.

Most companies need protection in the US, but dread the costs of filing in multiple European countries. Sure, you've heard of companies spending hundreds of thousands of dollars. But, consider that an EU application can be filed for less than USD 7500 in many cases, including attorneys fees and government filing fees. Design patent applications are even less.

What about EU trademark applications? Those are affordable too! Filing can be at a total cost of less than USD 6500, including legal fees and government fees. No actual use is needed for filing. Ideally, your company name should be protected as soon as possible, before competitors can try to get rights in the EU on your trademark.


5 Clean Water Startups Emerging in Israel

By: Eze Vidra

There is no human need more basic than water. We simply can’t survive without it. I talked about Charity:Water in a previous post, but today my focus is on agtech.

This week water has been on my mind for several reasons. One is the sale of Israel’s Netafim, the company that invented drip irrigation, to Mexichem for $1.5 billion. Netafim’s technology essentially enables farmers to “grow more with less,” increasing yields and improving crop production while preserving quality and quantity of water and soil fertility. The story of Netafim is profiled in the Coller Venture Review issue on deep innovation.The second reason is connected to Philanthropy. Jeff Bezos asked the world how he should donate his money on Twitter. He got more than 46,000 responses, but that created a new problem: how can he sift through all the answers, create themes and understand which ones would be most impactful.

That’s where AI came into the picture in the form of, a startup specializing in a form of advanced decision making called swarm intelligence, which essentially emulates the behavior of a bee swarm to come up with the most complete community decision. Bottom line is, after a rigorous process which included human evaluators ranking 6 choices at a time, a winner was clearly chosen. You guessed it: Universal Access to Clean Water topped the list.

Israel is a hotbed for agtech in general, and water tech more specifically. It came from a necessity: a small country with limited fresh water supply, Israel needed to figure out how to desalinate water, save water, and irrigate the desert. Netafim started in a Kibbutz in the 1960s, but to this day, there are approximately 130 startups operating in the water space in Israel alone, and it’s a buzzing space. There’s even a dedicated Water Tech conference.

You can find the full list on Startup Nation Central, but here are a few select Israeli agtech startups in the water space:


WaterGen’s cutting-edge technology provides an abundant, renewable source of fresh and clean drinking water by extracting it directly from the air. With the patented GENius, the world’s most energy-efficient atmospheric water generator (AWG) module of its kind, Water-Gen’s various water-from-air generator models can serve the clean drinking water needs from a small house to whole villages to an entire country.


Utilis technology is based on the analysis of multi-spectral, aerial images that capture the area of a suspected leak. By processing these images and applying algorithms, the system uses essential physical parameters, such as geological, meteorological, and hydrological factors. After calculating and adjusting for any distorting factors, the information is intersected with piping infrastructure layouts to indicate the location of underground water leaks.


Some Indiegogo Success Tips

By: Michael J Foycik Jr. 
August 6, 2014 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

If you're planning an Indiegogo campaign or other enterprise funding site, then these tips may help.

Have IP protection. What's that? It is intellectual property. It is not necessary to have an issued patent, but for success raising capital it is important to have at least patent pending protection. Trademark protection can help too. Don't neglect copyright protection and trade secret protection, if those are appropriate for your enterprise.

Get publicity. Use an inexpensive service that does e-press releases. Such a service can even help you write the press releases, for a small additional fee. And, try giving interviews to journals and magazines that might review your product or service.

Line up your tech resources ahead of time, to list on the site. These services would include affordable software technical services. Your product will need technical support services, so it may be a good idea to list such a company on your site. Other software services are important, as you're well aware already: sales support software, inventory management software, and employee management software, among others.


Securing Intellectual Property Rights


Intellectual Property Right (IPR) plays a vital role for economies to thrive in today’s competitive world.  Countries have been adopting rigorous legal and technical measures to secure the intellectual properties (IPs) which they consider very important to attract investments and also to secure their national interests. For businesses, IPR has become a valuable intangible asset which is necessary for their growth and sustainability. Protecting such assets creates an environment where they can invest to expand their businesses and engage in fostering innovations which in turn generate employment, besides adding revenue to the government coffers.

Current IPR Scenario in Nepal
The history of IPR regime in Nepal can be traced back to the period of Rana Prime Minister Juddha Sumsher some 80 years ago. He enacted the Nepal Patent, Design and Trade Mark Act, 1993 BS in order to address IP related issues which had begun to surface gradually with the growing industrial and commercial activities.  Eight decades after the implementation of the country’s first IP law, it is an irony that the IPR ecosystem in Nepal is still in a nascent stage. “Four factors that drive the engine of IP smoothly are creation, promotion, protection and use of IP. But Nepal’s IP ecosystem is moving at a snail’s pace due to inadequacies in the remaining three driving factors of IP. On the other hand, the quality of IPR protection and its service delivery is extremely poor,” observes IPR expert Madhu Soodan Paudyal.  Paudyal who is the General Secretary of the Intellectual Property Protection Society of Nepal (IPPSON), an independent organisation formed in 2012, says that there is no dearth of creative activities here coming out from academic and research organisations as well as technical professionals who produce literary, artistic, musical and scientific creations.

At present, IP activities in Nepal are limited only to the areas of trademark, design, patent and copyright. It is because the existing legal frameworks only cover these four aspects of IP. Presently, two separate laws, namely Patent, Design and Trade Mark Act, 2022 BS and Copyright Act, 2059 BS exist.  “There are some 4,000 maintained and valid trademarks but the annual application rate of patent and design ranges from zero to four which is quite disappointing,” says Paudyal. According to him, registration is not mandatory for copyright and so it does not indicate the total progress. “Copyright activities in musical and cinematographic works appear satisfactory but the creators of literary and academic works are not aware about copyright although creative activities are taking place,” he opines.

There are little or no activities seen in other forms of IP including geographical indication, trade secrets, integrated circuit design and new plant varieties due to the absence of legal frameworks to govern these IP aspects. “Many factors like traditional knowledge and indigenous technology, cultural expressions, digital data, bio-diversity and genetic resources and utility models, etc are part of our national interest,” shares Paudyal.

Besides the far too inadequate legal framework, the absence of a specialised IP office, service institutions and training centres also present difficulties in mitigating the 21st century challenges in properly managing IPR issues and fostering a favourable environment for the creators and innovators.

Insecure trade and service marks
At present, infringement of trademarks and designs is rampant in Nepal. Violation of trademarks happens generally in the form of unauthorized registration and the copying of trademarks of internationally recognised brands, also called well-known marks, by individuals and organisations. According to Janak Bhandari, founder of Global Law Associates PLC, a leading IP law firm, infringements mainly happen to take advantage of the market value of international trademarks. “Those who carry out such acts only have to make a little or no effort at all, in terms of accessing the market which has already been established by the reputed trademarks,” he says. Financial benefit is another factor Bhandari points out in trademark violation. “Many people who have registered trademarks of foreign companies bargain for the ownership of the brands in Nepal and demand large amounts of money to return the ownership,” he mentions.

Loopholes in the existing law are the main reasons behind the occurrences of infringements of trade and service marks. According to the Patent, Design and Trade Mark Act, 2022 BS, the rights and ownership of foreign brands are only established after the trademarks are registered in Nepal. “Exploiting this loophole, some Nepalis register and hold the trademarks of international companies,” says Bhandari, adding, “This has caused ambiguity in terms of registration and ownership of trademarks.”

The confusion over the status of well-known marks is also due to the fact that there is no mention of any parameter so as to determine the international trade and service marks in the existing law. Countries have been using the six parameters of WIPO to determine well-known marks. The parameters are (i) determining the first user or adopter of the well-known mark, (ii) the duration, extent and geographical area in terms of any use of the mark, (iii) registration and recognition along with its promotion and advertising (iv) the duration and geographical area of any registrations (v) the record of successful enforcement of rights in the mark and (vi) brand value.  “As a member of WIPO, Nepal first needs to adopt the parameters in its IPR law,” mentions Bhandari. 

According to WIPO, “Well-known marks are usually protected, irrespective of whether they are registered or not, in respect of goods and services which are identical with, or similar to, those for which they have gained their reputation.” 

Currently, a number of trademark disputes are pending at the Department of Industry (DoI) and courts. According to Shanker Aryal, director general of DoI, the government body under the Ministry of Industry (MoI) to oversee the registration of industrial and intellectual property, there are currently 445 pending cases of trademark disputes. “When I assumed the post around nine months ago, there were 649 cases pending at the DOI. Of them, we resolved 119 by the end of FY2073/74. In the current fiscal year, an additional 80 cases were registered while we resolved 165 more,” he says. Expressing surprise, Aryal says that there were cases pending for more than six years at the department. “There are interest groups eying leveraging benefits from certain trademarks and in the process hampering the original businesses,” he adds. The cases go to Patan High Court if DoI isn’t able to settle the disputes. In 2074 BS, a total of 23 cases of intellectual property disputes were filed at the court, out of which 19 are related to trademark and four in copyright disputes. The court has settled four cases till date. Though the exact number is not known, it is believed that dozens of such cases are currently pending at the Supreme Court. Trademark disputes of Rajanighandha, Kansai Nerolac and Havells are among the large number of high profile cases. Some of the cases have already received verdicts while many others are pending at the courts for over a considerable period of time.

Trademarks of Nepali brands, too, haven't been spared when it comes to theft and copying activities. A couple of years ago, the popular footwear brand Goldstar found itself in a legal fight over infringement of its trademark and the violators were sentenced with tough punishments for their involvement in illegal activities. A few weeks ago, another shoes brand Magic Footwear published notices in newspapers warning some manufacturers to immediately stop copying its trademark and designs of products or to face legal actions. Such notices have become a commonplace in the Nepali media in recent years. It has become a usual practice that whenever a product, be it Nepali or foreign, becomes an instant market hit, copies of the product pop up one after another. Nepali alcoholic brands in particular have been facing the problem of their brand names and packaging designs being copied.

Part of this particular problem in IPR is also due to the low trademark and brand consciousness among Nepali consumers. “This is why items that look identical to established brands are so widespread in the local market,” says advocate Bhandari. Generally, foreign FMCG, clothing and footwear brands are the victims of counterfeiting. In August 2016, police raided stores and offices of some Kathmandu-based importers and found that they had been importing and distributing various counterfeit products of the Indian FMCG major Hindustan Unilever Limited. Experts point out different ways to control such activities. “There is a need to make it mandatory to mention the brand name (trademark) and the real price of commodity in the customs clearance bill to easily identify foreign grey products,” suggests Paudyal.


Unpatentable - No Problem! Tips To Protect Your Idea Anyway

By: Michael J Foycik Jr. 
February 20, 2014
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

So your new idea might not be patentable. Don't let that stop you! Here's some tips on what to do when your invention is not patentable.

Tip one: mark everything “confidential” and protect it under trade secret law.

Tip two: anything can be a trade secret. It just depends on the person seeing it. If it's new to them, and it's marked confidential, then it's a trade secret.

Tip three: a trade secret is probably better than a patent when it comes to those you have direct contact with. This is helpful if the idea is misappropriated by a retailer, distributor, developer, investor, and anyone else who sees the idea through you.

Tip four: file a provisional patent application (“PPA”). It documents your trade secret, the date of filing, and the ownership. As a government record, it is evidence. Few things could be as good.

Tip five: mark your materials with a copyright symbol. It triggers at least some degree of copyright protection in many cases. This is done by use of the copyright symbol followed by the date and owner. Here's a made-up example: © 2014 ZYX Corp.

Tip six: use the trademark symbol on key terms/phrases to gain trademark rights. Trademark rights depend on actual use, for example here's a made-up example: ZYX Dessert TM . Here's another example: ZYX Dessert is a trademark of ABC Corp.


Fish & Richardson : Named No. 1 Patent Litigation Defense Firm for Past Five Years; Ranks Among Top Firms Representing Trademark Defendants

By: Fish & Richardson

BOSTON, March 15, 2018 /PRNewswire/ -- Fish & Richardson has been named the No. 1 firm representing defendants in patent litigation in the U.S. over the past five years by Lex Machina in its inaugural Top Law Firm Report for Select Federal Litigation 2018. The report showed that Fish represented defendants in a whopping 919 patent cases between January 1, 2013 and December 31, 2017. Fish also ranked among the top firms representing trademark defendants, handling 58 trademark cases during the past five years.

Fish was recently ranked the No. 1 patent litigation defense firm in the U.S. in Lex Machina's Patent Litigation 2017 Year in Review. Fish defended clients in 172 patent cases in 2017 – over 100 cases more than its nearest competitor.

"It's not just the number of cases in which we're hired, but the number of cases that we try. Clients are understandably very interested when they are making counsel decisions in identifying firms that have a real, demonstrated track record of experience in the courts. We simply know how to win, and we dominate in every major venue. That matters a lot to clients," said Kurt Glitzenstein, Litigation Practice Group Leader at Fish. 

Lex Machina's data for the Top Law Firm Report for Select Federal Litigation 2018 is focused on the U.S. District Courts and does not include appeals or modifications of judgments on appeal.

Quick And Easy Steps To Get Your Patent Application On File

By: Michael J Foycik Jr. 
February 20, 2014
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

Need a patent application on file in a hurry? This happens, for example, if you have a trade show coming up, or want to show your idea/invention to anyone.

First, write some things down: what it is called; what it does; how it works; and what it is made of. This part can be short or long, as you prefer. It is a great start either way!

Second, make simple sketches of what your idea/invention looks like. Show the parts, too. It's good to have several views, such as top, front, and side views.

Third, get an official patent office cover sheet for a provisional patent application online at, at the forms page. It's easy to find.

Fourth, check out the micro entity form and instructions. If you qualify (most do), you are entitled to much lower government fees, and fill out the micro entity form.

Fifth, put the information from the above first and second steps into the form of a standard specification with headings. This is easy to find at the site.

Sixth, file online or by Express Mail. The above-noted official patent office site has easy instructions for this.


Texas Supreme Court Finds Attorney-Client Privilege Protects Patent Agent Communications

By: Peggy Keene  

Patent Agent Communications May Qualify as Attorney-Client Privileged

Earlier this year, Texas made the news by becoming the first state court to find that communication between a patent agent and a client may qualify for attorney-client privilege protection.  The Texas Supreme Court made this decision earlier this year on February 23rd after appeals had passed through the lower Texas courts rejecting that premise.

The case before the Texas high court began after an inventor, Andrew Silver, successfully filed for a patent that covered a tablet device (“Ziosk”) that could be used for ordering food and service in restaurants.  Silver later sold the patent rights to a company called Tabletop Media LLC (“Tabletop”).  The legal dispute and case arose from a later contract dispute regarding the amount of licensing fees that were to be paid for the agreement.

Before the court, Silver made the argument that communications between the patent agent and himself should not have to be disclosed because they were protected under attorney-client privilege.  The first court to hear the case disagreed with Silver’s argument and ruled that Silver’s emails with his patent agent were not protected.  As such, the lower court ordered Silver to produce the emails to Tabletop, rejecting the argument that the communications were confidential and protected by attorney-client privilege.  After Silver appealed the holding, the Texas appellate court affirmed the ruling, saying it had no authority to create a new privilege for patent agents.

Attorney-Client Privilege Extends to Independent Patent Agents, Not Just Ones Working for an Attorney

In the final appeal, however, the Texas Supreme Court reversed the holding, finding that the emails could be covered by the attorney-client privilege.  In its holding, the Texas Supreme Court noted that it did not disagree with the lower court’s holding that no authority could be used to create a new privilege for patent agents.  Instead, the Texas Supreme Court stated the existing privilege already covered the communications.  The court also declined to agree that communications with Silver’s patent agent were only privileged if that agent was acting under an attorney’s direction.  The Texas Supreme Court instead opted to find that the Texas Legislature had intended for the privilege to apply to those who are authorized to practice law, not just those who hold a law license.  The court did note, however, that only some of the communications would be protected by attorney-client privilege, and as such, other communications would have to be turned over to Tabletop.

Patent Agent Protection Found in “Authorized” versus “Licensed” to Practice Law Statutory Language

Specifically, the Texas Supreme Court noted that the text of the statute discusses those who are “authorized” to practice law.  In its reading, the Court noted that the term “authorized” is broader than “licensed,” and as such, its protection may extend to patent agents, who practice some forms of law despite not being licensed attorneys.  This decision brings Texas in line with some federal courts, specifically the U.S. Court of Appeals for the Federal Circuit, which ruled on the same issue in March 2016.  Notably, however, the Federal Circuit ruling does not affect state cases, but the Patent Trademark Office does recognizes the patent agent’s privilege in its proceedings because it follows federal precedent.

Source >>

Google Secrets No More - What Recent Google Patents Tell Us About SEO, Ads, and More

By: Michael J Foycik Jr. 
January 9, 2014
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

There are interesting features in several recently issued Google patents.  There are interesting insights, possibly secrets revealed, and opportunities too.  Let's have a quick look.
A favorite of this author is Patent Number 8,589,391, which relates to a method for generating web site ratings for a user.  This seems to be very useful.  You can look this patent up online by searching “google patents advanced search” which brings up an option to search by patent number.  I do recommend this, since there is an option to download the patent as a pdf file; this applies to the following patents as well.

And, something functional: Patent Number 8,589,387, for an Information Extractor from a Database, also assigned to Google.  Here's an opportunity – if this is so important, other firms may well be able to develop improved/different methods for doing this which may well be of interest to search engine companies like Google.

More insights into the Google field of interest: Patent Number 8,589,399, for identifying terms of interest to an entity.  This has obvious interest to marketers, but may have broader implications.  And, there could be secrets revealed therein.  Worth a look!

More opportunities for programmers and marketers may be in Patent Number 8,549,032, also to Google, for determining proximity to topics of advertisements.  If this is still of importance now, other methods could well be of importance too.  There seems to be room for growth in this field.


Investors Back IoT Startups


Internet of Things startups took in more than $1.35 billion from corporate and private investors during the latter half of 2017, for a total of about $2.2 billion in the full year.

Chicago-based Uptake Technologies, an Industrial IoT startup, had the biggest haul of the year, with $117 million raised in a Series D round, on top of a $90 million Series C round earlier in 2017, bringing its total funding to more than $250 million. It strengthened its position as an IoT “unicorn,” which is now valued at $2.3 billion.

“We’re on a growth trajectory now where there is virtually nothing standing in our way from being the predictive analytics market leader across every heavy industry, from oil & gas to mining and beyond,” Uptake CEO Brad Keywell said in a statement. “The opportunity is too significant for us to not double down right now.”

Another IoT unicorn, C3 IoT of Redwood City, Calif., reported raising another $100 million in mid-January of 2018. Given the timing of that announcement, it’s almost certain that all the checks going into that round were signed by the end of 2017. C3 IoT has added artificial intelligence technology to its software product portfolio, no doubt pleasing existing investors TPG Growth, Breyer Capital, and Sutter Hill Ventures, while also attracting a new backer, The Rise Fund.

“C3 IoT is focused on running a rapidly growing, profitable, cash-positive business driving digital transformation at many of the world’s leading corporations. This capital will be deployed to substantially increase service and distribution capacity globally,” Thomas M. Siebel, chairman and CEO of C3 IoT, said in a statement.

Other big rounds in the second half of 2017 included $95.4 million for Preferred Networks, $89 million for Cradlepoint, $88 million for ForgeRock, $60 million for Ayla Networks, $50 million for TrackR, €40 million ($49.33 million) for Cubic Telecom, $40 million for Globetouch, $38 million for VitalConnect, $34 million for Automile, $33 million for Iguazio, $30 million for FogHorn Systems, $28 million for Maana, $27.9 million for Sixgill, and $27 million for Bastille Networks.

2017 was also a good year for IoT-related companies to cash out in big paydays.

Late in the year, Marvell Technology Group announced its plans to acquire Cavium for about $6 billion in cash and stock, bolstering Marvell’s IIoT offerings. The chip vendors expect to complete the transaction in mid-2018.

Silver Spring Networks was bought by Itron for about $830 million, net of $118 million in Silver Spring’s cash. Deere & Company purchased Blue River Technology, an agricultural IoT startup using machine learning technology, for $305 million in cash.

On the semiconductor side of IoT, Dialog Semiconductor acquired Silego Technology, a supplier of configurable mixed-signal ICs, for $276 million in cash, plus another $30.4 million in contingent consideration. Silicon Labs is buying the Z-Wave business of Sigma Designs in an asset sale valued at $240 million.

August Home raised $25 million in a private funding round during 2017. A year earlier, Amazon reportedly offered $100 million to acquire August Home, according to The Information, a bid that the startup declined. For its patience, August Home was acquired by Assa Abloy of Sweden last year for $150 million.

ForeScout Technologies, a cybersecurity startup, completed an initial public offering in October, raising $133.6 million.

According to PitchBook, the leading investors in IoT technologies are New Enterprise Associates (NEA), Intel Capital, Kleiner Perkins Caufield & Byers, True Ventures, Right Side Capital Management, GE Ventures, Techstars, and Qualcomm Ventures, in roughly that order.

Deloitte notes that venture-capital funding of AI-focused IoT startups picked up last year, with such startups raising $705 million in the first eight months of 2017. There were 21 acquisitions of AI-focused IoT startups during the first eight months of last year, compared with 24 in all of 2016 and 11 in 2015.


Claims In A Patent Application - What You Should Know

By: Michael J Foycik Jr. 
January 3, 2014
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

What is a broad claim?  How can you protect your invention when competitors make slight changes?  Should you even worry about these things?  Here is a simple guide that may help.

There is a law of claim infringement that is worth knowing.  A claim is infringed if the accuses product has each and every limitation of the claim.  What's that mean?  Well, suppose a claim for a pencil reads:  “An implement for marking having a hollow tubular portion having a spreadable substance inside.”  Then, a pencil having an eraser would still infringe – the added feature of the eraser does not matter.  Even more importantly, that claim even reads on a lipstick case.  What a wonderful claim!

You too can have good – even wonderful – claims, if your invention can support them.  The one problem is that the patent examiner rejects any claims that would read on the prior art patents.  So, no one else can ever get a claim for a pencil as broad as the above example, now that pencils are part of the prior art.

Let's say your invention has all kinds of wonderful and exciting features.  Many do!  How should be approach the claims for such a product?

One approach is to have several “independent” claims, which do not depend from any other claim.  Many of the features can then be added as depended claims, like this:  Dependent claim 2 for the above pencil invention could read:  “Claim 2:  An implement as claimed in claim 1, further comprising an eraser disposed at one end of the tubular portion.”


IP 103 - Trademarks v Trade Secrets v Patents– What’s the difference? (Trade Secrets)

By: Davidson Oturu


This is the final part of the article where we will examine trade secrets. We will also distinguish trademarks, patents and trade secrets.

Definition of trade secrets

The Black’s Law Dictionary defines trade secrets as “A formula, process, device, or other business information that is kept confidential to maintain an advantage over competitors; information — including a formula, pattern, compilation, program, device, method, technique, or process”. Thus, any confidential business information which provides an enterprise a competitive edge may be considered a trade secret.

As I referenced in the second part of this article, not all “inventions” can be protected as patents. As a result of this, scientific theories, food recipes, mathematical methods and commercial methods cannot be patented. You can read more on the part two of this series here. Part one of the article can also be read here as well.

However, certain “inventions” which are valuable can still be protected as trade secrets. It may be argued that strictly speaking, a trade secret is not an intellectual property right (IPR). However, in practice it has the same legal and commercial relevance as other IPRs and so it is dealt with in the same manner as other IPRs.

Article 39 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) provides for the protection of trade secrets. The TRIPS is an international legal agreement binding on all member nations of the World Trade Organisation (WTO). It sets out the minimum standards for the regulation by national governments of IPRS.

The factors that qualify confidential information as trade secrets are highlighted by TRIPS are as follows:

a)    It is a secret not generally known to the public;

b)   Due to the fact that the information is not publicly disclosed, it must have commercial value:

c)    It is the subject of reasonable efforts by the holder to maintain its secrecy.

Unique nature of trade secrets

Trade secrets can be broadly classified into two:

i)    trade secrets that protect inventions or manufacturing processes that do not meet the patentability criteria and therefore can only be protected as trade secrets. An example of this is a manufacturing process or customers list that cannot be protected as a patent but is considered valuable; and

ii)     trade secrets for inventions that fulfil the patentability criteria and could therefore be protected by patents.

A unique trait of trade secrets is that they are protected without registration or any procedural formalities. Thus, unlike patents and trademarks that are registered for a period of time, a trade secret can be protected for an indefinite period, provided it is not disclosed to the public.

Furthermore, unlike the United States of America that has a Uniform Trade Secrets Act, trade secrets in Nigeria and several countries are not protected by statute but are governed by contract, tort and other basic legal principles.


Responding to Restriction and Election Requirements in Patent Applications

By: Michael J Foycik Jr. 
December 19, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

It is not at all uncommon to receive an Office Action in a pending U.S. Patent application which is a Restriction requirement or an Electrion requirement. These are two different things, though they may seem similar. Here are a few things to know.

A restriction requirement is normally for completely separate inventions, based strictly on what is claimed. For example, let's say an application is directed to a new mirror and a new hammer. Restriction? Maybe, but it depends on the claims. If there are separate independent claims which recited the mirror and the hammer separately, then a restriction requirement may be made.

In responding to a restriction requirement, it is necessary to elect one of the inventions for further examination. It is possible to contest such a requirement, but there is little likelihood of success. The non-elected invention(s) will likely not be examined, but can be claimed in a future patent application called a “divisional”. A new government filing fee will be due. Advantageously, this means that the applicant's rights have additional life, and sometimes this is useful. For example when competitors try to invent around the claims, the claims in the pending application can be changed.


Common IP Issues Facing Startups and How to Avoid Them


Over the years of consulting startups I have ran into times where I needed to call Mark Leonard of Davis & Leonard LLP.  Mark is a top notch attorney focusing on trademark and copyright registration, general intellectual property (IP) counseling, e-commerce, licensing, and litigation in the areas of trademark and copyright infringement, computer intrusion, Trademark Trial and Appeal Board proceedings, and ICANN Internet domain name disputes.

Often when calling Mark it is in situations that could have been avoided by the startup founders and management if they had considered IP issues in their initial business planning.  Such hiccups can be very serious and are a clear black mark in the history of the startup which becomes a liability when looking for angel or venture capital funding.

Not only does it become a problem when looking for funding it also pulls founders’ and staffs’ time and resources from growing the company to fighting a lawsuit.

To help startups educate themselves before they get into hot water Mark has taken his time to let us interview him on common IP issues facing startups.

Joanna: When choosing a name for a new company what are some common mistakes startups make?

Mark: One of the top mistakes I see startups make is failing to conduct a comprehensive trademark search prior to launching the company.  This is likely because there are a number of myths that cause businesses to believe a search is unnecessary.  For business names, a very prevalent myth is that there is no need to search if the Secretary of State’s office approves the name of a corporation or limited liability company.  The Secretary of State’s name approval process uses criteria different from trademark law and only checks against corporate and limited liability names registered with that state.  It does not does not consider federally registered marks, partnerships, sole proprietorships, business entities in other states, or even state trademark registrations.  It is not uncommon for  trademark conflicts to arise between businesses in the same state that have both had their names approved by the Secretary of State.

A second myth is that it is sufficient if no identical matches are found after searching a mark on the Internet or United States Patent and Trademark Office (“USPTO”) records.  Trademarks need not be identical for a conflict to arise, phonetic similarity or similar meanings are sufficient.  These searches are also incomplete because trademark rights are acquired through use not registration and many businesses do not advertise on the Internet.  Thus, these searches may miss potential conflicts.

Startups should also be wary of mass market legal service companies that offer trademark registration services.  These companies often generate voluminous search reports, but because they cannot give legal advice there is no explanation as to whether the reports show any potential conflicts or not.  Startups should work with an experienced trademark attorney to conduct a comprehensive trademark search early in their business planning process to ensure the chosen name for their business, product, or service does not conflict with another trademark.

Joanna: A couple of years back a hot Silicon Valley startup named one of their key products the same name as a European nonprofit. The startup’s product had nothing to do with the mission or focus of the nonprofit and wasn’t even sold in the same industry or same country. However the European nonprofit was fairly wealthy and sent several cease-and-desist letters and threatened to file a lawsuit if the product name wasn’t changed.  Facing the threat of a lawsuit, the startup ended up having to come up with a new product name after it was heavily branded, and incur the costs of rebranding and throwing away all its marketing material.

What are the best practices when choosing product or company names?

Mark: Coming up with a protectable trademark is very important.  Whether a word or name is protectable as a trademark is determined by its strength. The strongest marks are fanciful, such as made up words like “Xerox”, or arbitrary, English words that have nothing to do with the product or service they are used with, such as “Apple” for computers.  The next category of strength below arbitrary or fanciful is suggestive.  A suggestive mark suggests, but does not directly describe, the qualities associated with the word in connection with the product or service with which it is used.  An example is “Apple-A-Day” used in connection with vitamins.  “Apple-A-Day” is associated with being healthy which is a characteristic that comes to mind when thinking about vitamins.

The next type of marks are descriptive.  Descriptive marks immediately convey a characteristic of a product or service, such as “5 Minute Workouts” as a mark for series of workout videos that can be completed in five minutes.  Descriptive marks are very weak and may be difficult to register or enforce.

The weakest category is generic marks.  A mark is “generic” if it is commonly used for the general name for a product rather than for identifying a particular source of a product.  “Thermos”, “escalator”, and “aspirin” are examples of marks that have become generic because the public commonly thinks of and uses these terms to name the products themselves rather than to identify a specific source or origin for them.

Startups should strive to choose arbitrary, fanciful, or suggestive marks.  The distinction between suggestive and descriptive marks is very fact sensitive and may not be readily apparent.  An experienced trademark attorney can help a startup ensure their marks are protectable and should be involved early in the trademark selection process.

Joanna: Startups often have limited resources and try to cut corners in hopes of saving a dollar here or there. I often have to remind startups to never use clipart from other websites. Often those reminders aren’t taken seriously until I give them examples of an actual founder of other startup that have called me in desperation after they have received letters from stock photo companies demanding payment of a $21,000 fine for using a photo without the proper license. The founder ignored the letter but then realized this wasn’t a joke as more letters showed up and lawyers started to call. At the end the founder settled the case out of court with a lawyer’s help paying $1800 however the issue could have been avoided entirely by buying the correct license from the start for only $2.


What Is Patentable?

By: Michael J Foycik Jr. 
November 15, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

Wonder what is patentable? When a good idea could becomes a valuable right? If so, read on!

The legal standards are simple to state: anything new an unobvious. But, what is new? And, what is unobvious? This is discussed as follows.

Anything “new” would include a new arrangement of old parts, an arrangement which achieves a new result, and any improvement to an existing device. These all may be deemed to be new and can therefore support a patent application. A very small improvement is still new under this standard.

Make something useful out of standard hardware items? That's ok, as long as it is new. How do you know it is new? Well, if you didn't copy it, and haven't seen one anywhere, then it could be new. A patent search might – or might not – turn up relevant prior art, so that's another way to try to guesstimate whether something is really new or not.

The next item, though, is whether the invention is unobvious. That is a legal determination which is typically made by a patent examiner in the course of his/her duties. This standard may vary greatly from one person to the next, but in the end the examiner's decision is the one that counts.


Protecting Intellectual Property Rights Abroad for Vietnam Enterprises

By: ANT Lawyers

The development of international supply chains has become a critical success factor for big companies, and should be seen as important key for products of developing countries to gain entry into high standard market such as USA, European Countries, and Japan. However, many Vietnam companies have experienced problems in shifting their supply chain abroad as well as managed their intellectual property such as geographical indication, trademarks.

On October 24th, 2017, Vietnam Intellectual Property Association (VIPA) in cooperation with the World Intellectual Property Organization (WIPO), Vietnam Chamber of Commerce and Industry (VCCI), International Association for the Protection of Intellectual Property Rights (AIPPI) organized the seminar “Protecting intellectual property rights abroad for Vietnamese enterprises” to provide Vietnam companies value information for protecting their Intellectual Property right in the Fourth Industrial Revolution and global supply chain development.

All the experts have strongly recognized the important role of intellectual property protection abroad for Vietnamese enterprises and introduced:

-Introduction to the International World of Intellectual property

-Protecting a valuable asset- How to protect your Brand with Madrid

-Options to protect an invention: Patent Cooperation Treaty (PCT) and trade Secrets

-Introduction to the international design System- Hague

-Other WIPO services, Tools and Products

-About International Association for the Protection of Intellectual Property- AIPPI (Association Internationale pour la Protection de la Propriété Intellectuelle)

Vietnam is a member of the WIPO and is a signatory to the Paris Convention for the Protection of Industrial Property. It has acceded to the Patent Cooperation Treaty and the Madrid Agreement Concerning the International Registration of Marks, and in 2004 joined the Berne Convention. Therefore, the Vietnamese enterprises should file trademarks, patents or industrial designs by international systems for saving cost and managing the registration procedures effectively. However, it is suggested that the international Bureau of WIPO does not decide whether trademarks, patents or industrial designs are eligible for protection or not, and the final decisions must depend on Intellectual Property law of each country i.e. Vietnam. For differences of laws in every country and difficult techniques when preparing Intellectual Property application, applicants should find valuable assistant from Intellectual Property agent.

Our licensed agent of intellectual property practice at ANT Lawyers helps clients to protect, and profit from their intellectual assets in Vietnam.

ANT Lawyers is supported by a team of experienced patent, trademark, design attorneys with qualification and skills handling full range of legal services relating to intellectual property in Vietnam.  We have specialized in the preparation and registration of patents, trademarks and designs for our clients.

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Patent Mistakes Commonly Made By DIY Inventors

By: Michael J Foycik Jr. 
October 24, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

There are some very common mistakes made by do-it-yourself (DIY) inventors when it comes to patenting. There are two main patent types, Provisional Patent Applications (PPAs) and Utility Patent Applications.

The worst mistake: trying to hide the invention. This happens when inventors recite all the advantages and benefits, but do not show enough structure to support those functions. The rejection that occurs in those situations is an “insufficient disclosure” rejection, and it is a serious matter in the patent world.

Drawings: color drawings are a mistake. Only black-and-white line drawings are accepted, except under relatively rare conditions such as a biological micrograph.

Also a mistake: drawings without proper margins of one inch at the top and left, 5/8 inch on the right, and 3/8 at the bottom.

Another mistake is failing to show enough features in the drawings. Many inventors seem to think one or two good drawings are enough. Many times it is necessary to have cross sections shown, enlarged detail views, and diagrams showing a change in position or condition. Also, front views of mechanical systems are often not enough. Other views may well be necessary: side, rear, bottom, perspective, and assembly drawings all find good use in patent drawings.


hould You Relocate Your Startup to Mexico?

By James Paine 

Forget Silicon Valley. The next big thing in the startup world is the exodus of talent to Mexico, and while this might sound crazy to begin with, it quickly starts to make a lot of sense. After all, there's a lot of competition in the Valley and the cost of living alone is through the roof, which can make it difficult for startups with little-to-no funding to gain a foothold.

That's exactly why more and more people are moving out of the Valley or establishing their companies elsewhere, and thriving startup communities are already popping up in cities as diverse as London, Toronto, Singapore and Tel-Aviv. Mexico could be the next logical destination, and there are a whole heap of reasons for that.

Let's face it, the weather is one of them. It's a popular spring break destination for a reason, and no one is going to complain if they have to work somewhere sunny in a country that's famous for its tequila. But that's not the only reason why it's worth considering Mexico as the home for your hot new startup. Even for an emerging and rapidly growing market, it has a lot going for it.

How Mexico is fostering talent

Mexico has always been towards the forefront of the high-tech manufacturing industry, and startups and established businesses alike have long been turning to the country for its lower labor costs and its tariff-free technology imports. There's as much expertise as there is in America but with a reduced cost of living and a number of other benefits that we'll take a look at throughout the rest of this article.

Just one example of this is the region of Jalisco - and Guadalajara in particular. For example, the city's historic downtown area is being revitalized with a 940-acre business hub for industries as varied as TV and film, advertising, video games, animation and e-learning. Meanwhile, the state is home to a range of high-tech companies including IBM, HP and Oracle, as well as plenty of startups who are taking advantage of the unique scene that Mexico has to offer.

In Silicon Valley, it can seem as though everyone you meet is an entrepreneur. That won't happen in Mexico, but that paradoxically seems to bring people closer together. The communities are more tight-knit with the result that it often feels as though everyone knows everyone. And that's not necessarily a bad thing.

The Mexican Silicon Valley

Jalisco is such a hotbed of talent that people have referred to it as the Mexican Silicon Valley, and one of the primary reasons for that is the fact that the region is investing in its infrastructure at the same time as founders are flocking to it. The region plays host to thousands of startups and its fair share of blue chips while exporting $21 billion in tech every year.

This investment shows in the infrastructure that's in place for ambitious founders. There are meeting rooms and coworking spaces, networking events, conferences, seminars and more. There's even a constant flow of new talent from nearby educational institutions, including the region's twelve universities.

Speaking of talent, it's often easier to make hires in Mexico than it is in Silicon Valley because there's less competition, although it can be difficult to lure people away from the big multinationals once they've settled in. But if you're happy to hire bright young minds and to provide them with on the job training, there aren't many better places to be.

Establishing a new reputation

Modern Mexico is very different to the popular perception that people tend to have, and even though the country still hits the headlines from time to time for some sort of organized crime, that largely takes place away from Jalisco and doesn't portray a realistic depiction of what life is like for the country's many tech founders and entrepreneurs. Many of the key players are actively fighting against this reputation, but most simply ignore it and get on with business.

It's this attitude that resonates with entrepreneurs. Jalisco is going up in the world, but it's not happening by accident. A lot of hard work is going into making the region attractive to entrepreneurs, including by offering government subsidies and reduced energy and labor costs - especially when compared to the cost of doing business in the Valley.

Mexico has been becoming quietly more popular amongst tech companies for the last twenty years or so, particularly amongst manufacturing and industrial tech companies. Some companies are even starting out in Mexico and then moving to the States once the time is right, although many more stay in Jalisco and the surrounding areas out of choice.

Supply and demand

Ultimately, much of the current tech scene in Mexico is being driven by the laws of supply and demand. There are over 100,000 manufacturing and engineering jobs in Guadalajara alone, and while the area can't compete against those in other emerging markets like India and China when it comes to the sheer quantity of its workforce, it does score highly when it comes to quality.

The burgeoning tech scene in Mexico is happening because people want it to happen, whether we're talking about government incentives that are in place to encourage growth or whether we're talking about the bootstrapping founders who want somewhere cheap to live while they get their idea off the ground. It's also the obvious place to go if you're developing a product or service that's aimed at the Latin American market.

It's not necessarily a case of people choosing Mexico as a base for their startup just because they can't afford the outrageous rates in Silicon Valley, though. After all, there are plenty of other international hubs to choose from. What those other hubs don't have, though, is the chance to be one of the defining startups in a rapidly growing community. They're already too well-developed.

When you look to the future, nothing is certain. That said, it's a pretty safe bet to say that any day now we're going to hear about some super successful app or social network coming out of Guadalajara or the surrounding areas. And who knows? Perhaps you'll be the one behind the helm.


New Technologies Worth Investing In

By: Michael J Foycik Jr. 
October 2, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.'

You want to find the hot new technologies, and invest in them.  Smart!

When a techology gets “old” there are too many companies in it, driving down profits.  And, people get tired of new product announcements in old technologies.  For example, when was the last time you got excited about an ad for tires?  Yet there was a time when many people would get excited about such an ad.

So, what's hot?  What has an open field ahead of it?  What has room for growth?  It really is possible to answer those questions, if you know how.  Here are a few tips.

First tip: find a field that has not been updated lately.  If it is in the news every day, though, chances are it is very updated.  For example, solar power is updated.  Cell phones too, and cameras, and televisions sets.

So what hasn't been updated?  What has a real future?  Easy!

Tip one: look at change.  For example, natural gas has dropped in price, and vast reserves have been discovered.  This means a sharp downward trend in natural gas prices.  What products will benefit?  We know that natural gas is even safe in the home, so anything goes.  Good fields for investment therefore will be anything that uses natural gas, yet hasn't been widely sold and has few competitors in the field.  If only we could discover what those products are!

It turns out that we CAN find those products.  Specifically, you CAN find what new things use natural gas, which companies are making them, and many other worthwhile details.  Here's how, so keep reading.

You can locate those products and the companies of interest, using patents as your guide.  That's not too hard – you can search on any patent site and limit your search to just the current year and a specific search term.  Easy!  And, issued patents often show the Assignee, i.e. the company that owns it.


Intellectual property strategies for startups

By: Benjamin Lehberger

Intellectual property protection is an important consideration for most startups. Obtaining intellectual property protection, such as patents, can minimize competition and act as a defensive mechanism against infringement claims from others. Intellectual property also can attract or solidify funding and partnerships. In formulating an intellectual property strategy for your startup, consider the following.

File early, and keep quiet

Your time to file for patent protection is limited and patents should be contemplated early on in development. In the United States, an inventor has a one-year “grace period” from first publicizing an invention to filing for patent protection, after which it is too late. However, you should not wait even that long. In 2013, the U.S. patent system switched from a first-to-invent to a first-inventor-to-file system. This subtle difference in terminology could mean dire consequences for those who delay seeking patent protection.

Under the old first-to-invent system, you could be the first to conceive of an invention and still obtain patent rights over an earlier filer by showing that you conceived first and continued to diligently work on your invention. Today, it is a race to the patent office. Regardless of who conceived of the invention first, the first one to file their patent application “wins.”

Also, it is important to note that the one-year “grace period” to file a patent application is not available in most countries outside of the United States. If you plan to seek patent protection abroad, publicizing your invention at any time before filing a patent application could put your foreign intellectual property rights in jeopardy. Therefore, file early and keep quiet until you do.

File again as the invention evolves

As your startup continues to develop its product or products, consider each new feature as a possibility for patent protection. Startups that file one early patent application and stop may find that, once the patent issues, the product has moved far beyond what was in the original patent application. The product may end up being under-protected or not even covered by the patent at all.

It is important to reevaluate patent protection on a regular basis and consider filing on new features of the invention when applicable. If the product is evolving quickly, consider filing a provisional patent application or a series of provisional patent applications within a year before filing a utility patent application.

Do not wait for your patent to issue

Patents take time. While there are avenues available to expedite examination, on average it takes more than two years for a patent to be granted by the U.S. Patent Office. About 30 percent of patent applications do not make it through at all.

Having an issued patent may help to get funding for your startup and secure your place in your market. But, do not wait until your patent issues to commercialize your invention. Keep your startup moving forward and keep developing. Chances are, you will solve additional problems along the way, which may lead to even more important inventions. In the meantime, you will be building your brand, reputation and revenue.

Consider design patents

When discussing patents, the focus is often on utility patents, but design patents should also be considered as part of a well-rounded intellectual property strategy. In general, a utility patent protects the way a product is used and works, while a design patent protects the way the product looks. By the end of 2015, the U.S. Patent Office had issued more than 9.2 million utility patents, but only about 746,000 design patents.

Design patents can provide significant value as a supplement to utility patents or as a replacement when utility patent protection is unavailable. Software utility patents are still available in the United States. But, following the U.S. Supreme Court’s decision in Alice v. CLS Bank, obtaining utility patent protection for software-related inventions has become more difficult and less predictable. Design patents provide a viable option to protect certain features of software-related inventions, particularly the graphical user interfaces.

The term of a design patent is slightly less, 15 years from grant for a design patent versus 20 years from filing for a utility patent, but so is the cost. Also, design patents often can be obtained much quicker than utility patents.

Do not rely solely on patents

While patents are a valuable asset to any startup, they are only one piece of the puzzle. First and foremost, a startup needs a good product or service to be successful. The Patent Office awards patents for new and non-obvious inventions. Receiving a patent does not mean, however, that it is necessarily a good invention or one that anyone will want to buy. Make sure what you are protecting is worth protecting.

Second, build a unique brand and protect it with registered trademarks. A trademark is a word, phrase, symbol or design that identifies and distinguishes the source of the goods of one party from those of others. Having a strong and recognizable trademark can be extremely valuable for distinguishing you from the competition. And, unlike patents, a registered trademark never expires as long as you keep using it. Trademarks do not have strict filing deadlines like patents, but it is best to start early and have a trademark clearance search done to ensure that there are no conflicts that could prevent your use of the trademark.

Finally, depending on the type of business your startup is in, copyright and trade secret protection also should be considered in your intellectual property strategy. Talk to an intellectual property professional as you begin building your startup to discuss what types of intellectual property protection will work best for you.

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