A step-by-step approach for early-stage entrepreneurs to follow in order to maintain IP protection through development. It was presented to members of the Georgia Tech Advanced Technology Development Center.

1. VALUE-DRIVEN IP PROTECTION: COST-EFFECTIVE STRATEGIES FOR SECURING YOUR INNOVATION Presented by: Clark A. D. Wilson Patent/IP Attorney e: [email_address] [email_address] p: 770.984.2300(w); 404.993.0901(c) LINKEDIN .COM/IN/CLARKADWILSON Brown Bag Program April 2010 © 2010 Gardner Groff, PC – All Rights Reserved

2. ADVICE FROM THE PAST "If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it.” Thomas Jefferson, August 13, 1813 © 2010 Gardner Groff, PC – All Rights Reserved

5. WHAT TO DO FIRST ? Do not tell anyone except a trusted circle Keep a journal and witness/date each new entry Perform several layers of patent “searching” Google Google Patents US Patent & Trademark Office Search Engine If no closely-related prior art : continue development If close prior art: identify differences and/or improvements © 2010 Gardner Groff, PC – All Rights Reserved

7. DETERMINE WHICH IP METHODS TO USE PROTECTION: PATENT V. TRADE SECRET, CONT’D… Invention is patentable and has commercial potential… File a Patent Application ASAP Invention is not likely patentable and not important… Trade secret and keep a detailed record of development Invention is patentable but not that important… File an application as practical (defensive position, licensing potential, inventor recognition) Invention is important but not likely patentable… File application if it is novel – commercialization may provide basis for patentability © 2010 Gardner Groff, PC – All Rights Reserved

9. HOW TO PROTECT YOUR RIGHT TO PATENT BEFORE PUBLICATION OR OFFER-FOR-SALE File a provisional patent application !!! * 12 month grace period from above acts to file in USA *Outside USA there is no grace period IF DISCLOSURE BEFORE PATENT APP IS UNAVOIDABLE Ensure that the public use is just for “experimental purposes” No complete disclosure of how it works or is made No unrestricted use Requirement of complete return after use Request for comments after use No payment for undefined use by 3 rd party Proof of development of the design Sign a Non-Disclosure Agreement with recipient © 2010 Gardner Groff, PC – All Rights Reserved

17. PRIOR TO OFFERING MY PRODUCT FOR SALE If you intend to try to offer your invention for sale, make sure you have at least a provisional patent application filed If you have a patent application filed, use “Patent Pending” on any offer for sale Note : An offer for sale initiates the 12 month clock in the USA and may extinguish international patent rights © 2010 Gardner Groff, PC – All Rights Reserved

19. Helpful Resources Business Entrepreneurship Program April 2010 © 2010 Gardner Groff, PC – All Rights Reserved