Session 7:
Intellectual Property - Filing Your Patent
Bao Tran
Master Agenda - Entrepreneurship 101
Session 1 - January 10th - What is creativity? What is my passion?
Session 2 - January 17th - Behavior traits for a successful entrepreneur.
Session 3 - January 24th - Turning your passion into a business opportunity.
Session 4 - January 31st - Steps needed for your startup ... 1,2,3 GO.
Session 5 - February 21th - Financials of the business opportunity.
Session 6 - February 28th - Presentation skills, successful pitches, what ideas got funded.
Session 7 – March 6th - Filing your patent, patent gotchas, successes and failures.
Session 8 - March 13th - Pitch your business plan to VCs (only 12 spots will be available).
Weeks 1-3 recap
Week 1
Passion
Creativity
Problem
Week 2
Leadership
Hardwork
Integrity
Social Good
Week 3
The Hacker Way
The VC
Business Plan
Weeks 4-5 recap
Week 5
Profit = Sales - Costs
Revenue Models
Financial Statements
Week 4
Incorporation
Paper Money
Pivot
Exit
Week 6
They don’t come if
you build it.
Customer Research
Capital
Labour
Knowledge
Capital
Labour
Knowledge
Capital
Labour
Knowledge
Pre-industrial era Industrial era
The « knowledge
economy »
Source: WIPO
1982 2000
Intangible assets
Physical assets
US COMPANIES’ INTANGIBLE ASSETS AS % OF
TOTAL ASSETS
Source: WIPO
7
The IP of Gillette (2006)
Gillette Company Asset Values in US $ (2006) Value ($) Total
Working Capital 2,850 4.9%
Fixed/other assets 5,131 8.8%
Intangible assets 5,854 10.0%
IP 44,700 76.3%
Total Invested Capital 58,535 100%
© Seth Associates, 2006 All Rights Reserved 8
Under estimation
of its
importance
Cost of Patenting
Enforcement of IPR
Time Required for Grant
of a Patent/registration of TMLack of Awareness
Myth that IP can’t be
enforced
Reasons Why IP is Ignored
Innovation
May be expensive
Risky and full of uncertainties
Requires skilled labour
Results may be copied by others
The Innovation Process
An innovation starts as an idea/concept that is refined and developed before application.
Innovations may be inspired by reality (known problem). The innovation (new product development)
process, which leads to useful technology, requires:
Research
Development (up-scaling, testing)
Production
Marketing
Use
Experience with a product results in feedback and leads to incrementally or radically improved
innovations.
New Product Development
Stages in a New Product Development process:
• Idea Generation
• Idea Screening
• Concept Development and Testing
• Business Analysis
• Beta Testing and Market Testing
• Technical Implementation
• Commercialization
12
IP adds value at every stage of the innovation and
commercialization process
Literary / artistic
creation
Invention
Financing Product Design
Commercialization
Marketing
Licensing
Exporting
Patents
Copyright
Patents
Trademarks
Trademarks,
Ind. Designs,
Geo. Indications All IP
rights
All IP rights
Intellectual Property Rights
Patents
Trade marks
Trade Secrets
Copyrights
Trademarks
Trademarks are identifiers of sources of products that usually arise from
significant efforts in promotion or advertising expenditures
“Brand” Companies
Nike...
Adidas...
Reebok...
Levi-Strauss…
…Own No Factories
Trade marks
Name
Logotype
Symbol
Slogan
Shape
Color
Example of Trade Secrets Assertion
Monday April 9 3:45 AM ET
Fruit of the Loom Sues Competitor
CHICAGO (AP) - Fruit of the Loom is suing competitor Gildan
Activewear Inc., accusing the Montreal company of stealing trade
secrets to grab a competitive edge in the cutthroat apparel business.
Fruit of the Loom contends the reports include production goals for
plants in El Salvador, Honduras and Mexico that would allow Gildan
to estimate production costs. They detail sales to specific customers,
trends in demand and budget information.
Trade Secrets
• Can last forever
• Need to show efforts to keep the secret confidential
• If others can figure out the secrets through rightful
means such as reverse engineering, then secrets can
be lost
• Famous trade secret is the Coke formula
WHAT IS A COPYRIGHT?
Among other things, a copyright is the right to make copies
A copyright is a bundle of rights that include the right to
reproduce, prepare derivative works, distribute copies,
perform the work publicly (live performance), display the
copyrighted work publicly, and in the case of sound
recordings, to perform the work publicly by means of digital
audio transmission (webcast).
COPYRIGHT AND RELATED RIGHTS
• Copyright
• Performing Rights (Musical and Dramatic Works)
• Broadcasting Rights
• Distribution Rights
• Reproduction Rights
• Right to Make Derivative Works
• General Designs and Vessel Hull Designs
• Derivative Works such as Translations
WHAT DOES COPYRIGHT COVER?
Artistic works that typically appeal to the senses such as
sight and sound. Original Works of Authorship.
Examples:
Books, plays, poems, sculptures, dolls, vessel
hull designs, paintings, photographs, computer
programs, news papers, furniture, websites,
magazines, architectural works, motion pictures,
audiovisual works, dance steps, designs.
Patents
Example: ring-pull cans
The inventor licensed the system to Coca-Cola at 1/10 of a penny per
can. During the period of validity of the patent the inventor obtained
148,000 UK pounds a day on royalties.
Patents
Patents reward disclosure rather
than secrecy
In exchange for disclosure, inventors
get exclusivity for a period of time
Technical Information
Contained in a Patent Document
Description
Background and discussion of relevant prior art
Problem to be solved by the invention
Solution to the problem in broad terms
Detailed description with examples
Drawings where appropriate
Abstract
Claims
Patent Protection
Provides the exclusive right to commercialize the innovative product in the
selected markets
Facilitates the licensing or sale of an invention to foreign firms
Increases the negotiating power of a firm vis-à-vis competitors (particularly
good for cross-licensing)
May enhance the image of the company (in the eyes of investors, partners,
consumers) as being technologically developed
Facilitates the establishment of partnerships and joint ventures in domestic
and foreign markets
Case study on Patent Protection
Case study on the commercialization of a patented product
Croatian pharmaceutical company (Pliva) discovers new antibiotic
(Azythromicin)
Pliva applies for patent protection in Croatia and in various
potential export markets using the Patent Cooperation Treaty
Large pharmaceutical company (Pfizer) searches patent databases
and discovers the Pliva patent
Pliva licenses Pfizer to produce the antibiotic in the US as well as
in some other countries in Western Europe, while Pliva maintains
the exclusive right to commercialize the antibiotic in Eastern
Europe
Checklist
Integrate IP into the company’s business strategy
Make sure that trade secrets are kept within the enterprise and prepare,
where appropriate, confidentiality agreements
Make sure that patentable inventions are not shared with others or published
before filing a patent application
For export-oriented firms, make sure IP is protected in all potential export
markets
Ensure that any modifications and/or improvements to protected inventions
are further protected
Make sure maintenance fees are paid on time
Checklist
Conduct freedom to operate search using patent databases to develop your business
strategies
When conducting joint research with other enterprises or research institutes, or when
engaging external consultants make sure that there is sufficient clarity on who will own
potential IP generated from the research project to reduce derivation charges under
the AIA
Monitor the market and make sure that your IP assets are not being infringed and
conversely to object to new patents that may improperly block your products.
Use your IP portfolio as leverage when seeking sources to finance your business
Conduct an IP Audit
Class Exercise
Class Exercise
• Introduce your Founding Team and Startup Name
• What does the Startup do (idea)?
• Pick one or two components from Business Plan template
and describe the components to class.
Appendix
Business Plan
Problem Statement
Solution to Problem
Business Model
Product and Technology
Competition
Marketing and Sales
The Team
Financial Model

Startup Bootcamp - Session 7 of 8 - Intellectual Property, Patents

  • 1.
    Session 7: Intellectual Property- Filing Your Patent Bao Tran
  • 2.
    Master Agenda -Entrepreneurship 101 Session 1 - January 10th - What is creativity? What is my passion? Session 2 - January 17th - Behavior traits for a successful entrepreneur. Session 3 - January 24th - Turning your passion into a business opportunity. Session 4 - January 31st - Steps needed for your startup ... 1,2,3 GO. Session 5 - February 21th - Financials of the business opportunity. Session 6 - February 28th - Presentation skills, successful pitches, what ideas got funded. Session 7 – March 6th - Filing your patent, patent gotchas, successes and failures. Session 8 - March 13th - Pitch your business plan to VCs (only 12 spots will be available).
  • 3.
    Weeks 1-3 recap Week1 Passion Creativity Problem Week 2 Leadership Hardwork Integrity Social Good Week 3 The Hacker Way The VC Business Plan
  • 4.
    Weeks 4-5 recap Week5 Profit = Sales - Costs Revenue Models Financial Statements Week 4 Incorporation Paper Money Pivot Exit Week 6 They don’t come if you build it. Customer Research
  • 5.
  • 6.
    1982 2000 Intangible assets Physicalassets US COMPANIES’ INTANGIBLE ASSETS AS % OF TOTAL ASSETS Source: WIPO
  • 7.
    7 The IP ofGillette (2006) Gillette Company Asset Values in US $ (2006) Value ($) Total Working Capital 2,850 4.9% Fixed/other assets 5,131 8.8% Intangible assets 5,854 10.0% IP 44,700 76.3% Total Invested Capital 58,535 100%
  • 8.
    © Seth Associates,2006 All Rights Reserved 8 Under estimation of its importance Cost of Patenting Enforcement of IPR Time Required for Grant of a Patent/registration of TMLack of Awareness Myth that IP can’t be enforced Reasons Why IP is Ignored
  • 9.
    Innovation May be expensive Riskyand full of uncertainties Requires skilled labour Results may be copied by others
  • 10.
    The Innovation Process Aninnovation starts as an idea/concept that is refined and developed before application. Innovations may be inspired by reality (known problem). The innovation (new product development) process, which leads to useful technology, requires: Research Development (up-scaling, testing) Production Marketing Use Experience with a product results in feedback and leads to incrementally or radically improved innovations.
  • 11.
    New Product Development Stagesin a New Product Development process: • Idea Generation • Idea Screening • Concept Development and Testing • Business Analysis • Beta Testing and Market Testing • Technical Implementation • Commercialization
  • 12.
    12 IP adds valueat every stage of the innovation and commercialization process Literary / artistic creation Invention Financing Product Design Commercialization Marketing Licensing Exporting Patents Copyright Patents Trademarks Trademarks, Ind. Designs, Geo. Indications All IP rights All IP rights
  • 13.
    Intellectual Property Rights Patents Trademarks Trade Secrets Copyrights
  • 14.
    Trademarks Trademarks are identifiersof sources of products that usually arise from significant efforts in promotion or advertising expenditures
  • 15.
  • 16.
  • 17.
    Example of TradeSecrets Assertion Monday April 9 3:45 AM ET Fruit of the Loom Sues Competitor CHICAGO (AP) - Fruit of the Loom is suing competitor Gildan Activewear Inc., accusing the Montreal company of stealing trade secrets to grab a competitive edge in the cutthroat apparel business. Fruit of the Loom contends the reports include production goals for plants in El Salvador, Honduras and Mexico that would allow Gildan to estimate production costs. They detail sales to specific customers, trends in demand and budget information.
  • 18.
    Trade Secrets • Canlast forever • Need to show efforts to keep the secret confidential • If others can figure out the secrets through rightful means such as reverse engineering, then secrets can be lost • Famous trade secret is the Coke formula
  • 19.
    WHAT IS ACOPYRIGHT? Among other things, a copyright is the right to make copies A copyright is a bundle of rights that include the right to reproduce, prepare derivative works, distribute copies, perform the work publicly (live performance), display the copyrighted work publicly, and in the case of sound recordings, to perform the work publicly by means of digital audio transmission (webcast).
  • 20.
    COPYRIGHT AND RELATEDRIGHTS • Copyright • Performing Rights (Musical and Dramatic Works) • Broadcasting Rights • Distribution Rights • Reproduction Rights • Right to Make Derivative Works • General Designs and Vessel Hull Designs • Derivative Works such as Translations
  • 21.
    WHAT DOES COPYRIGHTCOVER? Artistic works that typically appeal to the senses such as sight and sound. Original Works of Authorship. Examples: Books, plays, poems, sculptures, dolls, vessel hull designs, paintings, photographs, computer programs, news papers, furniture, websites, magazines, architectural works, motion pictures, audiovisual works, dance steps, designs.
  • 22.
    Patents Example: ring-pull cans Theinventor licensed the system to Coca-Cola at 1/10 of a penny per can. During the period of validity of the patent the inventor obtained 148,000 UK pounds a day on royalties.
  • 23.
    Patents Patents reward disclosurerather than secrecy In exchange for disclosure, inventors get exclusivity for a period of time
  • 24.
    Technical Information Contained ina Patent Document Description Background and discussion of relevant prior art Problem to be solved by the invention Solution to the problem in broad terms Detailed description with examples Drawings where appropriate Abstract Claims
  • 25.
    Patent Protection Provides theexclusive right to commercialize the innovative product in the selected markets Facilitates the licensing or sale of an invention to foreign firms Increases the negotiating power of a firm vis-à-vis competitors (particularly good for cross-licensing) May enhance the image of the company (in the eyes of investors, partners, consumers) as being technologically developed Facilitates the establishment of partnerships and joint ventures in domestic and foreign markets
  • 26.
    Case study onPatent Protection Case study on the commercialization of a patented product Croatian pharmaceutical company (Pliva) discovers new antibiotic (Azythromicin) Pliva applies for patent protection in Croatia and in various potential export markets using the Patent Cooperation Treaty Large pharmaceutical company (Pfizer) searches patent databases and discovers the Pliva patent Pliva licenses Pfizer to produce the antibiotic in the US as well as in some other countries in Western Europe, while Pliva maintains the exclusive right to commercialize the antibiotic in Eastern Europe
  • 27.
    Checklist Integrate IP intothe company’s business strategy Make sure that trade secrets are kept within the enterprise and prepare, where appropriate, confidentiality agreements Make sure that patentable inventions are not shared with others or published before filing a patent application For export-oriented firms, make sure IP is protected in all potential export markets Ensure that any modifications and/or improvements to protected inventions are further protected Make sure maintenance fees are paid on time
  • 28.
    Checklist Conduct freedom tooperate search using patent databases to develop your business strategies When conducting joint research with other enterprises or research institutes, or when engaging external consultants make sure that there is sufficient clarity on who will own potential IP generated from the research project to reduce derivation charges under the AIA Monitor the market and make sure that your IP assets are not being infringed and conversely to object to new patents that may improperly block your products. Use your IP portfolio as leverage when seeking sources to finance your business Conduct an IP Audit
  • 30.
  • 31.
    Class Exercise • Introduceyour Founding Team and Startup Name • What does the Startup do (idea)? • Pick one or two components from Business Plan template and describe the components to class.
  • 32.
  • 33.
    Business Plan Problem Statement Solutionto Problem Business Model Product and Technology Competition Marketing and Sales The Team Financial Model