Common investor mistakes with IP and how to avoid them
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This document discusses common intellectual property pitfalls that investors should be aware of and provides tips for conducting due diligence on a company's IP. It notes that investors should research IP ownership, technology claims, and ensure the company can maintain its patent portfolio. The summary also highlights the need to understand how a company's IP compares to competitors and whether the IP covers core inventions or smaller improvements.
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Common investor mistakes with IP and how to avoid them
- 1. Common Investor Pitfalls with Intellectual Property and how to avoid them
- 2. Your hosts Heidi Brun Joint Head of Patent Department Eitan, Mehulal & Sadot Zack Miller Partner, Investor Community OurCrowd
- 3. Many types of Intellectual Property (IP)
- 4. Many types of IP • Patents • Trademarks • Designs • Copyrights • Trade Secrets Different types of companies have different IP needs
- 5. Many types of IP Trade Secret vs. Patent
- 7. Due Diligence • Ownership • Technology • Claims • Where filed
- 8. Ownership Issues • Company ownership vs. inventors • Employees vs. contractors (particularly for software) • Inventor’s willingness to sign assignments • Patent laws in various countries vs. US law
- 9. Ownership Research • Online at various patent offices • Search via company name, inventor names • http://assignments.uspto.gov/ assignments/q?db=pat
- 12. Technology
- 13. Technology • Is it brand-new tech? Or, improvement of a successful one? • Does the company have a new take on an old idea? • How do the claims compare to the product? Are they on only a small part of the product? If so, is this still good? • What claims/patents do competitors have?
- 14. Big vs. small inventions
- 15. Big vs. small inventions • Startups concentrate on their BIG inventions • Do they have other good (smaller) ideas hiding in the patent applications? • Don’t always claim what can be claimed — applications may have valuable inventions described in applications that haven’t been claimed
- 16. Large number of applications/patents • Is this good? Does it mean that the company is innovative? • Yes — the company has many ideas • No — the company is good at defining its one invention in many ways (which may be good…) • Remember: Some startups write patents knowing investors don’t read them
- 17. Technology Research I • Patentability search — Google Patents: Advanced Search
- 19. Technology Research II • Proviso 1 — any patents found, have to be provided to USPTO, ILPTO • Proviso 2 — patents found in search may have broad claims that company’s products may infringe. Need to deal. • Need to decide for yourself if: • current claims will issue • current claims are useful to the company • current claims are useful to your plans for the company
- 21. Patent Portfolios I • Multiple inventions • Filings in multiple countries • US only or around the world? • US investors have a bias to US filings • On the other hand — the company may file in many countries • without realising the huge maintenance cost
- 22. Patent Portfolios II • When money runs tight, a startup won’t keep up its patent portfolio • Investors may have to jump in to keep rights active
- 23. Patent Portfolios Research • Search in Espacenet, Dialog, Thomson- Reuters etc. for patent families • Check status and any close dates — will the company be able to keep applications alive
- 27. Property • Patents have value which outlives the company • Patents have a market
- 29. Heidi M Brun Eitan, Mehulal & Sadot +972-2-633-5021 +972-9-972-6000 heidib@ems-legal.com www.ems-legal.com Zack Miller OurCrowd +972-2-636-9000 +1-914-617-1026 zack@ourcrowd.com www.ourcrowd.com Thanks for joining us!