Presentation on practical knowledge on patents for startup enthusiasts from Pune OpenCoffee Club (POCC) meet on Sept 19, 2009.

1. Become Patent-Smart
Entrepreneur!
Hemant Chaskar
Inventor, US Patent Office Agent, and
Director at Leading Tech Startup

2. Note, Not A Disclaimer
This presentation is not designed for
IP law practitioners or students
Rather it offers practical knowledge on
patents for business professionals

3. IP Alphabet Soup
Patents Trademarks
Inventions Distinguishing
marks
They Are All
Independent Entities!
Copyrights Trade Secrets
Tangible expressions Company secrets

4. Patent Right
“Right to exclude” others from
- Making
- Using
- Selling
- Offering for sale
- Importing
the patented invention.

5. Jurisdiction
US Patent valid only in US etc.
There is nothing called “International Patent”
• PCT and Paris Convention are procedures to
facilitate patent filing in different countries
Each country processes (examines) separately
May get patent in India, but not in US etc.

6. Obtaining Patent (Prosecution)
File invention description Patent Pending
with patent office Time ~ 3-4 Yrs
- Sets the date of invention Cost ~ upto Right
$10K vests
Patent office assesses it (for US patent) from
over prior art filing
Arguments/counter-arguments date
…
Patent may be granted Patented
Validity: 20 Yrs

7. What Is Patentable
In principle: Process, Machine, Article, Composition, Plant.
Interpretations differ in different countries.
Abstract concepts, (laws of) nature
are out of scope everywhere.
Less Tangible Inventions “Bilski” Case:
(Business processes, data Currently waiting for
analysis technique etc.) USA word from U.S.
Processes
More Tangible implemented Supreme Court,
Inventions (Machines, by software about clarification of
devices, substances, “tangibility” in U.S.
chemical processes,
engineered plants etc.) Others (with different
country-specific scopes)

8. What Is Patentable
Useful in practice
Implementable
Result need not be perfect
Working prototype need not be ready
Combination can be patentable even if individual
components are well known
Does not have to be ground breaking discovery
But needs to be novel and non-obvious over prior art
Should be able to convince patent examiner!

9. Practical Use of Patents
Assertion/Licensing
Likelihood
Credible Defense
Negotiating lever
Projecting good image
Self-satisfaction

10. Hard Realities of Assertion/Licensing
Having patent does not mean you can wield it
Your patent can be invalidated
Your opponent can counter-sue
Settlements (licensing) are hard to come through
Court remedy may be too rough to handle
From time, money, intensity and uncertainty perspective
You (small fish) may have to sign up “patent troll”

11. Countering Opponent’s Patents
Try to design around
Look for prior art (or other issues) which can
invalidate the patent
Maintain your patent or other instrument as counter
Assess if the opponent can really go for court
remedy
License if nothing of these work

12. How to Read Patent
Understand claims, claims are the only thing which
define scope of patent
There are independent claims and dependent claims
which depend from independent claim, e.g.,
Claim 23: “A process comprising steps A, B and C.”
Claim 24: “The process of claim 23 further comprising step D.”
All processes which perform
A, B, C and possibly more steps Claim 23 scope
All processes which perform
A, B, C, D and possibly more Claim 24 scope
steps

13. What Causes Infringement
E.g., Claim 23: A, B, C
Infringement
Process with steps A, B, C, X, Y, Z on Claim 23
E.g., Claim 23: A, B, C
No Infringement
Process with steps A, B, _, X, Y, Z on Claim 23
Infringement on any one claim of
patent causes infringement on patent

14. Infringement vs Patentability
Example of distinction between the two:
“Candy with plastic wrapper”
Patent X
Claims • Product infringing on X
“bare candy” • Invention patentable over X
(assuming no other prior art)
Also note:
Infringement is on “claims of patent” in the
“same jurisdiction”
Patentability is to be analyzed with respect to “all
prior knowledge” available “worldwide”

15. When You Have an Idea
Do prior art search to find out if idea is patentable
File as early as possible, dates are very important
If you need more time to decide, at least file provisional
application to get official date stamp
Do not disclose your idea to others until you at least file a
provisional application
US has one year grace period to file from public disclosure, but many
others (e.g., Europe) do not allow any public disclosure before filing
If you decide not to go for patent, make sure you have
strategy to prevent others from patenting
Find trustworthy counsel

16. Thank You.