Brief Summary
This video is a panel discussion about intellectual property (IP) for startups. The panelists, all IP lawyers and experts, discuss the different types of IP, how to determine if your idea is patentable, and the importance of protecting your IP. They also cover the costs and timelines associated with obtaining patents and trademarks.
- The four main types of IP are patents, trademarks, copyrights, and trade secrets.
- It is important to protect your IP early on, even if you are just starting out.
- There are different types of patents, including utility patents, design patents, and provisional patents.
- It is important to understand the requirements for patentability, including novelty, non-obviousness, and enablement.
- Trade secrets are a valuable form of IP protection, but they are only effective if you take reasonable steps to keep them secret.
Introduction
The video begins with a welcome from the host, Harish, who introduces the event as part of the ETH Annual Startup Boston Week conference. He thanks the sponsors, Safel University and Lando & Anastasi LLP, for their support. He also highlights the importance of the conference in connecting the Boston and New England startup community.
Moderator Introduction
Andrea Reid, a lawyer with Lando & Anastasi LLP, introduces herself as the moderator for the session. She shares her background in IP litigation and polymer materials, emphasizing her passion for the field. She outlines the session's goal: to provide attendees with the knowledge and tools to make informed IP decisions for their companies.
Panelist Introductions
Andrea introduces the panelists: John Spangenberger, a partner at Lando & Anastasi LLP specializing in patent law; Amanda Cardona, an associate at the firm with expertise in chemical engineering and patent prosecution; and Jen Carnas, the executive director of the Suffolk Law IP Center and a former life sciences patent attorney. Each panelist gives a brief elevator pitch about their background and areas of expertise.
What is IP?
Andrea starts the discussion by asking the panelists to define IP. Jen emphasizes that everyone has a different understanding of IP, highlighting its complexity. She describes it as creative things of the mind, including inventions, innovations, and intangible assets. John adds that IP is an intangible asset, contrasting it with tangible property. Amanda agrees and emphasizes that IP covers a wide range of creative work, including problem-solving, improvements, and marketing strategies.
Types of IP
Amanda explains the four main types of IP: patents, trademarks, copyrights, and trade secrets. She provides a brief overview of each type, highlighting their key characteristics and areas of protection.
Importance of IP for Startups
Andrea discusses the importance of IP for startups, particularly patents and trademarks. John emphasizes that IP protection is crucial for startups, especially those with limited capital and brand recognition. He uses the example of a startup seeking investment and highlights the importance of patent protection in securing funding and deterring competitors. He also shares a story about a client who faced a substantial judgment due to lack of patent protection, emphasizing the defensive value of patents.
Identifying Valuable IP
Andrea asks how startups can identify their valuable IP. Amanda suggests looking at existing products and services in the market and identifying improvements or differentiators. She also mentions marketing materials as a potential source of protectable IP. John adds that the value of a patent depends on the scope of its claims, emphasizing the importance of understanding how easy it is for competitors to design around the claims.
Patent Law
The discussion shifts to patent law, with Andrea asking about different types of patents. Jen explains the two main types: utility patents, which protect inventions with a use or function, and design patents, which protect purely ornamental features. She uses the example of Apple vs. Samsung to illustrate the importance of design patents.
Provisional and Non-Provisional Patent Applications
Jen explains the difference between provisional and non-provisional patent applications. Provisional applications are placeholders that provide temporary protection while non-provisional applications are examined by the patent office and can lead to a granted patent. John emphasizes the value of provisional applications for startups due to their lower cost and flexibility.
Patentability of Software
A question arises about the patentability of software. John acknowledges the complexity of the topic and provides a brief overview, stating that it is possible to obtain patents on software inventions but it is challenging. He emphasizes the importance of understanding the specific requirements for patentability in the software space.
Cost and Timeline of Patent Litigation
The panelists discuss the cost and timeline of patent litigation. John acknowledges the high cost of defending against patent infringement claims but emphasizes that having patent protection is still valuable for deterring competitors and potentially securing an exit. He also mentions the possibility of obtaining triple damages or attorney's fees in cases of blatant infringement.
Requirements for Patentability
Amanda outlines the requirements for patentability, including novelty, non-obviousness, enablement, and eligibility. She explains each requirement in detail, highlighting the importance of providing sufficient disclosure in the patent application while maintaining confidential information.
Patent Searching Resources
Andrea asks for recommendations on patent searching resources for startups. Amanda suggests using the US Patent and Trademark Office (USPTO) website, the European Patent Office website, and Google Patents. She highlights the user-friendly interface of Google Patents and its ability to translate international applications.
Documents to Collect for Patent Applications
The panelists discuss the types of documents startups should collect if they are considering filing a patent application. John recommends preparing an invention disclosure form, which includes basic information about the invention, inventors, and how to make and use it.
Patent Application Deadlines
John emphasizes the importance of filing a patent application before any public disclosure of the invention, including private offers to sell. He explains that any disclosure before filing can jeopardize patent rights.
Patent Prosecution Timeline
Amanda discusses the timeline for patent prosecution, explaining that the USPTO aims to issue a patent within three years of filing a non-provisional application. She outlines the different options for delaying or expediting prosecution, including filing a provisional application, an international application, or a track one application.
Design Patents for Software User Interfaces
A question arises about using design patents to protect software user interfaces. John confirms that design patents can be used for this purpose and are a more affordable option than utility patents. He also mentions the possibility of pursuing copyright protection for the user interface.
Cost and Timeline of Design Patents
The panelists discuss the cost and timeline of design patents. John states that design patents are significantly less expensive than utility patents and that the prosecution process is generally quicker. He emphasizes the importance of providing clear drawings in the application.
Cost of Patent Litigation
Andrea addresses the question of cost in patent litigation, acknowledging the wide range of potential costs. She explains that each party typically pays their own attorney's fees, unless there are exceptional circumstances. She highlights the importance of considering the complexity of the claims, the number of patents involved, and the willingness of the opposing party to fight.
Data for Patent Applications
The panelists discuss the type of data that should be included in a patent application. John explains that specific data, such as exact numbers or algorithms, should be avoided to prevent unnecessary disclosure. He emphasizes the importance of consulting with a patent attorney to determine the appropriate level of detail.
IP Protection for Visual Artists
The discussion shifts to IP protection for visual artists, particularly digital artists. Jen explains that copyright is the primary form of protection for visual art, covering original works of authorship in a fixed tangible medium. She emphasizes that copyright protection arises automatically upon creation and that registration is not required but can provide additional benefits.
Copyright Protection for AI-Generated Art
A question arises about copyright protection for art generated by AI. Jen explains that under current US law, AI-generated art is not considered protectable by copyright because it lacks a human author. She mentions the monkey selfie case and the ongoing debate about AI and copyright law.
Definition of Human Authorship
The panelists discuss the definition of human authorship in the context of AI-generated art. Jen acknowledges the difficulty in determining how much human intervention is required to constitute a work by a human author. She mentions the Andy Warhol case and the evolving legal landscape surrounding transformative art.
Trademarks
Andrea asks Jen to discuss trademarks. Jen explains that trademarks are source identifiers that distinguish goods from others in the marketplace. She provides examples of trademarks, including words, symbols, sounds, smells, and colors. She emphasizes the importance of proving that a trademark has a distinguishing characteristic in the marketplace.
Copyrights
Jen explains that copyrights protect original works of authorship in a fixed tangible medium. She provides examples of copyrighted works, including books, movies, poems, websites, and marketing materials. She also mentions the protection for pantomimes and choreography.
Trade Secret Protection for Product Formulations
A question arises about trademarking product formulations. Jen explains that trademarks are not used for this purpose, but patents or trade secrets can be used to protect formulations. She emphasizes the importance of keeping trade secrets confidential and highlights the potential for criminal liability in cases of trade secret misappropriation.
Best Practices for Trade Secret Protection
John discusses best practices for protecting trade secrets. He emphasizes the importance of taking reasonable steps to keep them confidential, including physical security measures, employment agreements, and non-disclosure agreements.
Copyright Protection for Derivative Works
A question arises about copyright protection for derivative works, such as images used on T-shirts. Jen explains that derivative works based on AI-generated images are not currently protectable by copyright in the US. She emphasizes the lack of a clear legal standard and the potential for litigation.
Disclosure of AI Use
The panelists discuss the ethical obligation to disclose the use of AI in creating creative works. Jen explains that attorneys have an ethical duty to inquire about AI use and that it is a violation of those duties to file for copyright protection without making such inquiries.
Conclusion
Andrea concludes the session by summarizing the key takeaways and encouraging attendees to visit the USPTO website, Google Patents, and the Lando & Anastasi LLP entrepreneurship center for additional resources. She thanks the panelists and Startup Boston for hosting the event.
Closing Remarks
Harish closes the session by thanking the panelists and attendees. He promotes the upcoming events of Startup Boston Week, including a startup crawl and a session on building a finance function for scaling businesses. He encourages attendees to stay for the next session and scan their QR codes for registration.
