Countersignature Trademark Assignment Agreement Made Easy

Countersignature trademark assignment agreement

do you want me to start or do okay okay [Music] Thanks so thanks so much for having me here today I know that some of you I've seen at prior sessions with my students have given and today I'm just going to kind of give you an overall view of IP and what it looks like in the startup world so for those of you who don't know me as Elizabeth said I'm faculty director of the entrepreneurial law clinic where we offer pro bono services to high tech ventures nonprofits micro enterprises and social ventures and we put together teams of law school students and business school students all from the u-dub who work on various projects together so if any of you are interested in signing up for our clinic there's an online application and I'll have a link to that at the end of the presentation so briefly just a roadmap for today I'll be talking about founding teams and IP issues specifically proprietary information and invention assignment agreement I know that's a mouthful trademarks copyrights patents trade secrets NDA's and non-competes now just to be clear I'm not going to cover these in any great depth I'm going to give you the high level 30,000 foot overview because each of these our course sort of in and of themselves and some of them actually have been covered in prior presentations which I know Elizabeth are they available okay they will be available soon so there's all my students last week covered trademarks and copyrights and right after me I have a student group covering patents so I hope you stick around for that okay so founding team and IP issues so let's say you want to start your own startup so what do you do most of the startups here are built around some major form of IP some type of innovation so what is the first thing you have to think about well one of the things you have to think about is if you're employed what advice does your employer have to this IP did you sign a non-compete agreement did you sign for Praia terry information invention assignment agreement also you created this IP so who does it belong to now what do you guys think well it doesn't belong to the company yet right so it belongs to you because let's say you haven't incorporated yet well it might be a good time to think about incorporation so you can house your IP someplace so that personal liability also does not attach to you there might be other contribute contributors right so let's say you have a co-founder or you know you're talking to somebody about the invention and they gave you an idea that helped to improve the invention well does that person have a right to your IP these are all issues you need to think about if you're creating your own innovation and you want to be able to protect it later on down the road and are there any necessary third-party rights that you have to think about so for example let's say you are relying on another innovation and maybe perhaps you need to license the technology from that innovation to make sure that your technology works so that would also be another critical piece of the problem so what is proprietary information and invention assignment agreement anyone have any ideas anyone ever signed any of these okay what do you think it is okay so the gentleman here said and he's exactly right like you're signing a document which says hey like I you know in my employment and in the company as Mike in my capacity as employee anything I work on here belongs to you however there might be an attachment that says but I hereby exclude these inventions so what do you think when let's say you're going through your first round of financing people are going to look at they're going to want to see what you excluded on your list of excluded inventions because it better not be something that's crucial to the innovation that they're investing in so this is typically signed upon employment but what happens if you don't have it signed upon employment because this is something that startups typically forget right they have a lot of other things going on they're interested about getting their invention up and running doing different iterations and beta testing and so forth so this is something that they might forget so how do you think they correct that any ideas so luckily it's correctable you're just gonna have to go back so let's say later on you discover oh my goodness this guy did not sign or this woman did not sign a proprietary information invention assignment agreement well that's when a lawyer comes in handy hasil I know a lot of entrepreneurs out there think oh my god I have to work with a lawyer I really don't want to have to do that because they're just gonna be a roadblock in what I have to do but this is where your lawyer helps you know is paid what they're worth so they're gonna tell you this is how you fix the problem you're going to need to pay someone you know give them some sort of consideration so the legal term called consideration whether that's money or what have you to to now sign this agreement at this point okay because I can tell you that if you're looking for money let's say in the venture capital context they're gonna want to make sure that every single one of your employees has signed one of these proprietary information and invention assignment agreements again something that people oftentimes forget to do because they're just moving too fast they didn't hire counsel they just decide to incorporate and said hey I'll worry about all this other stuff later but it does become critical at some point in time all right so trademarks we get a lot of questions sometimes we have clients that come to us no matter if it's oh you know high tech startup micro enterprises I want to trademark this name so what does that mean you know obviously all these symbols you see here all well-known right so what is a trademark it's any word name similar device or any combination thereof with the use or intent to use and commerce and I did this is a critical part it identifies the goods or services so if someone sees the Nike swoosh they know like exactly what that is related to right like it has 99% consumer recognition so that's how you know that's how valuable their trademark is and it also distinguishes those goods or services from goods and services sold by others okay so copyright where does the copyright come into play any ideas there's another question that we get like these people are not really sure what a copyright is okay so if you have artistic work software this could be copyright bull so it's an original work of authorship so something created by you fixed in a tangible medium of expression so what does that mean it have to actually be written down someplace recorded you know I got the question once well what about like Native American oral storytelling well that unless it's recorded or written down someplace you're not gonna really have a copyright because that's not in a tangible medium of expression it's not necessary to register your copyright but might as well do it it's pretty cheap and then it also if someone infringes upon your copyright you can sue them it's not necessary but it's it's good to put people on notice so if you did create something you just put this little nice symbol here C with a circle around it the year that it was created and your name and for more information you can go to this website alright secondly what is a patent so patent is a little different and we're always going to ask this question I want a patent you know my innovation but first of all is it even patentable it's a question we ask but it's a you have a 20 year term to a patent and it's different from the other types of intellectual property protection in that it's a right to exclude others from making using selling offering to sell or importing the invention and it differs from country to country so if you have a patent here not really going to help you if you need it patented and some place in Europe Latin America what-have-you you need to follow those countries patent laws as well and get patents in every single jurisdiction there's different types of patents the most common one is a utility patent there's design patents so think of like the Apple uses a lot of design patent it's an IP strategy so you know the design of its phone there's plant patents very few people get both and then there's what we call provisional and non provisional patent applications so provisional patent application is when you have like a one-year period where you file your patents and you and then you have it that year to then file within that year you have you can file your non provisional which will get you the 20-year term but of course it's a very long process it's probably the hardest form of intellectual property protection to get it can take years so what is a trade secret how many of you had at KFC I know I have KFC yep so the recipe for KFC is a trade secret this is the cheapest form of intellectual property protection because basically have to pay nothing you just have to keep it secret coca-cola formula is also another well-known trade secret or not well known people don't know about it but it's a trade secret only supposedly urban myth has it that you know only two people know it and it can never be on a plane at the same time etc and they have it under lock and key someplace and only one person knows the combination so what's the criteria for a trade secret it's not generally known it has economic value so it doesn't have economic value why would you really care right and there's some reasonable effort to maintain secrecy so what do you think the trade secret would be useful do you guys have any ideas in terms of when would you think you would want trade secret protection so one would be like a recipe another one might be like customer lists or strategies right so going forward and I'll actually have an example of this later on and you know how would you maintain you know what does a lot of people in the company needed to know this well you have to select a few people you don't want everyone so let's say you have a company of 100 if every single one of those people employees knew what your invention was about or your trade secret was about that's not going to help you any you need to limit the number of people that know about the trade secret and you have to have reason efforts to maintain secrecy meaning like you don't have it out in the open someplace you have marked confidential only certain people can access it meaning that it's you know it's either like encrypted in some way or there's a password in order to get to it okay the other thing I wanted to cover was non-disclosure agreements if you've ever visited any of the big companies around here Starbucks Amazon what have you the first thing they'll have you do before you even walk through their doors if you're if you're visiting in there is to have you sign a nondisclosure agreement most people sign them not realizing you know what they're saying like oh I'll just sign this but what does it do so a non-disclosure agreement is asking the person not to disclose certain information that they're learning you know let's say when you're touring around Amazon or Starbucks so they're gonna define certain information is confidential they will and there's different types of non-disclosure agreements it could be one way NDA Mutual NDA meaning that it goes both ways and it really depends on who the disclosing party and the receiving parties so if you're the disclosing party you're gonna want this to be as broad as possible if you're the receiving party party you want the whatever you're signing on to be as narrow as possible right makes sense however there are things that are it's typical for these certain types of things to be excluded from the definition of confidential information so for example the information becomes public through no fault of the employee or whoever the recipients of the information is secondly the confidential information is already in the person's possession third the information might have been received from a third party and fourth it was in developed independently developed by the employee or recipient without using the confidential information so in terms of the term of a nondisclosure agreement it really varies could be two years three years four years five years generally the recipient as you can imagine wants to limit the term as much as possible and the disclosure wants to continue the obligation for as long as they possibly can so what about non-competes there's different criteria for non-competes has anyone ever had to sign one okay did you actually read it yeah okay so what struck you about the non-competes when you when you read it okay yes to summarize for our audience who were being live-streamed two non-competes are you know for a particular line of business it's not like the whole company right okay and you said for you for yours okay so there's a certain term and you can't work in a certain type of technology okay gentleman in the back yeah yeah so they don't they're trying to limit sometimes I'll limit you geographically they'll limit you like a type of technology you can work on because let's say you worked in Amazon's web services so maybe they don't want to work for another kind of cloud-based business and they'll have it for a particular term but it has to be one of the criteria for non-competes is that has to be reasonably necessary to protect the business or goodwill of the employer another criteria is no greater restraint than it's reasonably necessary upon the employee so meaning like you don't want to affect the person's ability to make a living right so if they said you can't do all of Washington State and you can't compete for any technology company and for a term of 10 years that's really not gonna fly and no undue harm to the public so there was actually a really interesting piece that I wanted to share with you as a court case and being a transactional attorney I don't read a lot of court cases but I found this one particularly interesting it was called Amazon v powers and one of the this former employee of Amazon mr. powers went to work for Google he worked in Amazon Web Services and then he was going to go to the cloud computing business for for Google so Amazon sued because they said well you can't go to a competitor you sign this non-compete and what was interesting is so in Washington state non-competes are legal in California they're not and they're very unless under very narrow there's very narrow narrow exceptions so they kind of went back and forth on this but ultimately and interestingly enough Google or mr. powers prevailed because Google's attorneys were really crafty and they had documented there mr. powers employment offer and his you know the agreement when he joined Amazon in such a way that it wouldn't conflict with the non-compete that he had signed with Amazon furthermore the judge found that Amazon did not define the boundaries you know he made it was a very generic non-compete meaning that it could have applied for any employee in the company or that's what it made it sound like so they said no you need to Tarot it and narrow it tailor it more narrowly to fit this particular person's situation if this person is really that important to you and you're trying to say like he can't work for this other company so all this is to say is like when you sign a non-compete this is why you know it's good practice if you're let's say you're starting your own startup and you're hiring someone else that's coming from a similar line of business ask to see their non-competes ask to see their prior documentation so it goes back to what I was talking about in the beginning which is look at the you know look at what documentation people have from their former employer it's really important how many you have used lyft or uber okay so this is an interesting one about confidential information so there was a company called cherry which was a car washing service and mr. Vander Zanden worked for cherry which was then which lift then aqua they aqua hired Vander Zanden that means they got him through an acquisition and then later on mr. Vander Zanden left lift and allegedly took confidential information to Ober and this confidential information was what they were claiming we're like their lifts trade secrets so their customer base their you know like kind of how they stret howard they were gonna strategize regarding their expansion so this is ongoing but what was essential in this critical in this case was the fact that mr. Vander Zanden had signed a confidentiality agreement and sorry an NDA and led you know the whole reason he got into trouble was because it was claimed that he had taken 1,400 files through his Dropbox account so I think it's still ongoing and what the the exact outcome of this was but it was a really interesting case of how things can really go sideways if proper protocol isn't followed so how many of you in this room are students students okay so you're probably interested in okay what does it if I'm developing I pee on you dubs campus does that belong to me does it belong to the University what do you guys think so let's say that you you know you're you didn't use any sort of equipment at the u-dub but you may have done it in the classroom context you develop some kind of IP related for a class project where do you think that would leave you in terms of your ownership rights in the IP to yourself you think it's yourself okay how many people think it's to yourself how many people think it's not it's to the u-dub okay why people don't know okay so the answer is I'm gonna give you the lawyers answer to everyone hates which is it depends so it depends on what type of IP was developed you know was it in conjunction with some specific research that your professor was doing that he or she got a grant from you know I mean there's a lot of it's very fact-specific is what I'm saying so the good thing to always do is ask your professor number one hey you know is this something am I is this thing I'm working on for you is it gonna belong to you or does that does this IP belong to me if I'm doing it as part of a class project if it's IP developed in the lab so let's say you're a graduate student and you're working in a lab on campus it's gonna belong to where ya to the lab so that one's a pretty easy one but what about you know we've read a lot in the newspaper you Dubbs been getting all this kind of great money and grant money from like Boeing and others what about if you're working in the Boeing the Boeing I don't know Cigna called Boeing lab so that you know the engineering they have Boeing well who do you think that belongs to yep so the gentleman here said they you usually sign actually the problem I would say always sign an agreement with Boeing clarifying who the IP belongs to all right so make sure you read what you're signing when you sign those things because it might be that you're granting an exclusive license or a non-exclusive license but understand what your rights are and if you don't understand ask questions and if you're really not sure like whether or not the IP belongs to you or the university commotions it's a great resource they have wonderful people there who work there that can help you figure out if it really belongs to university or if it's if it's yours so what about IP use in the classroom and then outside of the classroom so what I mean by that is you know a lot of times students don't necessarily differentiate if they're using intellectual property you know let's say you're grabbing different slides for your presentation and you just like I am here do you think this this do you think the IP the do you think I can use any sort of IP to kind of make my point let's say I had pictures that were not mine but it was from some some site like a graph from the newspaper do you think I can use that yep so as long as I sight it I can use that information because it's for an educational purpose so just my point here is just when you're in the non classroom context or if you're doing it for money or something else the whole ballgame changes so if you are borrowing other IP the message is be careful okay so lastly the one last thought I want to leave you with was when you're startup you need to think about your IP strategy essentially from day one so meaning number one you're going to put into place the necessary documentation to show that the company owns the IP because that's the crown jewel of what you know investors are investing in so you want to make sure that the IP you know that the company can make the representation that the company owns the IP the second point is that you know most companies are gonna use multiple forms of IP protection so you know anything from the NDA that I talked about to non-compete to the trade secrets trademark patents copyrights it's gonna be some combination of these it's not going to be just one thing typically because any single technology can be covered by multiple forms of IP and any of the IP protections that I mentioned can be used in a single product okay and as I promised at the beginning of the presentation here's information on the entrepreneurial law clinic so to the extent that you are interested in applying for our services please do so we run from the act for the entire academic year except for summer we're also part of the United States Patent and Trademark Office law school clinic certification program in patents and trademarks so we do file patent applications as well as trademark applications for our clients and typically they're seen in a much faster basis than you would normally be seen if you were just you know filing it through a law firm or filing it yourself so we represent nonprofits high tech ventures micro enterprises so you know smaller companies of five or fewer employees social ventures so ventures that might have a social purpose but might also be for-profit for example and we also have partnered with commotions to help with some of the legal analysis for spinouts out of commotion yes so it's best once you develop IP it's best to house it within some sort of entity so if not by default if you have multiple people working on it your partnership if your purpose is to you know make profit and that doesn't necessarily have the liability protections that you want so from an incorporation standpoint you want something that will limit your liability personally because let's say something goes wrong with this product and there's some accidents or there's something in the course of this person's employment with your company where something bad happens you don't want to be personally liable right you want to minimize that so you that therefore you put all the assets in the company and it's also easier to when you want to be acquired for example they have some acids or you know that they can acquire yes okay so the question was as an academic let's say you presented your research too early and you didn't have any IP protection around it well what I would always urge you to do before you make some sort of presentation is to talk to the equivalent of the technology transfer office so in this case it's Coe motion which is so much more than a technology transfer office so I almost hesitate to use that term but just for simplicity sake because that's what most other people sort of would envision it as and they can you know file a provisional patent application so literally they will just like put together a cover sheet and like just submit the whole research paper and that way you're protected the other way to do it I mean it's kind of hard to what the information is is out there it's out there right and so other people can can use it or do and it's public disclosure so the clock starts ticking as to when you start you know getting a patent on it so you're gonna essentially have a year where you're gonna want to file something from a patent perspective yeah so if it's a if you've publicly disclosed the information in your patent then you have a year yeah because now the u.s. under the American Invents Act is now first to file system instead of first to invent so now it's like in line with the rest of the world yes okay so the question was you know you know how effective is a trade secret and what can you do to protect your rights in a trade secret so the the interesting thing about trade secrets is that their protection can essentially be indefinite there's no term limit for it like there is for the other stuff like so for example for copyright if it's a single author it's the it's the life of the author Plus 70 years you know for patents 20 years for a design patent is actually less so when I talk about patents for the 20 year term it's for a utility patent application and Trademark also has limits on it as well so the thing is to take the precautions that I mentioned meaning a limited number of people know it the you know make sure that you're taking certain precautionary measures such as making sure that to keep the information private right or like very inaccessible unless it's to the specified few individuals that are allowed to have access to the information in their course of work the problem with trade secrets however is like once the information is out there is it's out there so you can sue and you'd have to show the economic harm done for you because you'd probably sue for some type of and I'm not a litigator so I can't speak to the mechanics of it but that's your only remedy at that point because once the trade secret is out there it's it's out there other questions yes okay so the question was when the employees have to come in and sign all this documentation how do you make it legally binding so you want to make sure that first you're incorporated as a company right and then there's a certain type of signature block so so you're gonna you know have the person's name on it they'll sign it and usually it'll you know maybe there's a counter signature perhaps by the company but you know you would just have to make sure you keep good records because let's say you're looking for your round of financing you're going to have to show documentation that you have all of these documents signs so typically what happens is when companies are going through the investment process they go what's called through what's called due diligence are you guys familiar with the term due diligence so do diligence you're basically doing your homework on the company you're making sure that a company is quote-unquote clean and in order to do that you're looking at a lot of these documents some of which are form documents so the proprietary information and inventions assignment agreement I mentioned it's a form document so you provide that form and you know put a list if your company counsel you provide that form put a list of all the names of the people who have signed that document and then you provide it you know to the in the kind of electronic room that you would store it in and what the attorneys on the other side investors counsel would be looking at would be like if anyone excluded things from it but you should already know that as the company and ask company counsel the main thing is to make sure you have very clean records so make sure that everything you know because people get these papers get lost you know oftentimes people don't have like an HR person but just making sure that you know you're keeping them at least in some binder or something and they're not like you know oh I left it here in this file cabinet and I have it over there that that's just not gonna work you need to be organized about it so it's easily accessible other questions [Applause] testing testing testing love one your love five testing love one testing testing gotta remember to mute this when I'm dying setup mumbled into the nectar make sure you get this from me when I'm doing because I will just hold on to it I go to my Steve [Music] hi thank you everyone for coming to learn about the basics of patenting both Alex and I are you Doug students here as a law school studying intellectual property and so we thought about how like what is the best way to approach this and then we thought we'd take you through the actual process of obtaining and holding a patent and we thought that might be a nice way to introduce the concepts of patent law for you okay another thing we're gonna do for you is we're gonna have a little running total at the bottom of the screens as we go through that process it's gonna describe the fees because one of the major considerations for whether or not you want to obtain a patent is the somewhat considerable fees that you're gonna have to pay and so what you're looking at here is kind of up and down these are all kind of the major milestone fees you're gonna have to think about and across are kind of the different entities that you can follow your application as the specific fee that you wind up paying depends on that entity and I'll go into that a little more in a little more detail in the next slide we're actually going to focus on the small entity to avoid kind of confusing you with too many numbers here so the different kinds of entities so there's the large entity which is kind of the default entity and they pay the most if you want to be considered a small entity or micro entity which gets a discount on your patent fees you have several things you have several requirements you have to meet so a small entity gets a 50% discount on their patent as small and to you is gonna be so a single person or a small business or a non-profit a micro entity gets 75 percent discount on their patent fees and they still have to be in one of the small entity categories they have to be one of those three things they also have to not already be named on more than four patents and they also cannot receive a gross income above a certain level and so that's three times median household income and for 2016 that's a hundred and sixty thousand dollars but if you have this information in your head and you you know at some point later want to seek a patent just make sure you check with you to the USPTO website and get the actual figure because that's going to change from year to year so what's a patent a patent is just a social construct that we've come up with to promote innovation and it's actually not a particularly new idea in fact what you're looking at here is actual text from the Constitution and so it was so important to the founding fathers that they put this put the idea of promoting innovation in the in the founding document so what this means as patents are a bargain between society and an inventor and so an adventurer will disclose their invention to society so we get this information and in exchange society will give an inventor exclusive rights for a certain period of time so that's 20 years from the date that you file your application and one thing to know that these rights are exclusive rights you don't actually get the right to do anything you get the right to exclude others from doing something and that's making using selling or importing your invention so starting at the beginning of our timeline we start when you have the idea so the conception of your invention first thing you're really kind of wanted you to start thinking about is there's something called a one-year statutory bar and so that means if you publicly use or disclose your invention before prior to one year before you file your application then you are barred from seeking a patent and so what does that mean these are actually pretty strictly interpreted to be really careful killer here public use so one of the earliest cases for public use had to do with like a corset that a gentleman gave his lady friend to wear and she wore it under a dress but she went out and so that was public use public disclosure is very similar and tell your friends about it they haven't signed a confidentiality agreement that can potentially trigger the public disclosure bar so started thinking about when you're using these things and when you're disclosing these things as to when that clock starts ticking one other thing I wanted to note about public disclosure because it is the incubator and a lot of people are very interested in finding things and startups one thing that has been reported to me is that a lot of venture capitalists aren't particularly excited about signing a nondisclosure agreement so be really super careful about who you just close things to and maybe talk to a lawyer before you go through that process so another thing to think about is is your invention had an eligible subject matter and so there's kind of four major food groups of subject matter so it's compositions processes machines and manufacture things that are specifically excluded include abstract ideas also nature and national phenomenon where this comes up a lot recently more than anything is software and biotech inventions so software is an algorithm so it's basically formula is to try and solve a problem and a lot of course look at that as an abstract idea so what they do is they consider that and then they add they ask you to tell me what else can you bring that's an inventive step so can you change the efficiency of a machine somehow is there some tangible result in the end in other words it's just a really mushy gray area right now so just be thoughtful and talk to you an attorney before you kind of pursue that another oops another kind of issue is biotech inventions so the most recent Supreme Court case basically said if you isolate DNA that's not patent eligible if you change it slightly to be CD in ink that is patent eligible and so this is also a pretty murky gray area and so just be careful those two areas so some other considerations we all are we already kind of talked about the right to exclude you don't really get the right to do anything you throw right to exclude others from doing things making selling using importing there's also consider the inventor versus the owner and this comes up a lot in the university setting for example because you'll have an individual who is responsible for the idea they are the inventor they are always going to begin the inventor and they have to be named on the application is that they're not necessarily going to be the owner a lot of times in the course of your employment you've already signed an agreement with your employer a lot of times it's University and they require you to assign any inventions during the course of your employment to them in which case they would so two different things between inventor and owner we kind of already talked about disclosure and the sense of don't disclose things without thinking about that one-year bar the other side but disclosure is you kind of take yourself out of the category for certain other IP rights such as trade secrets once you disclose your information so be careful with that and be thoughtful about whether or not you want to do that we already kind of touched on cost it's definitely an expensive process to think about that it's also potentially a lengthy process typically 42 months this varies dramatically depending on what your invention is but just be mindful it's not something where you submit your application the next day you have a patent it is definitely a long process so back to our timeline you've already had the idea you thought about the one your bar and now you want to buy your application so this is actually what the front page but patent looks like and they can vary in leak lengths pretty wildly from several pages to like 50-plus pages this is an example of a poke go bump and I don't know if anybody remembers that here's kind of the main figure right here once you follow this application as a small entity you're already out eight hundred dollars you paid your filing fee you paid your search feet and your examination fee and kind of girl you're already you know you're already pretty much in the red zone so you got to think about that too so kind of the four major things that we're gonna touch on that are application requirements we already kind of talked about inventor ship a little bit you're typically going to have figures to help explain your invention the claims are gonna be really important and define the scope of your invention you're also gonna have a section that's called a specification it's like a written description of what you've invented and come to talk about those more in depth I'm going to turn this over to Alex hi guys I'm Alex I'm me talking about a bit more about in detail about these issues so once again we're going back to our Pogo ball patent and as you can see here we've listed inventors and assignee and that's another way of saying owners so it's very important that you name all your inventors because lawyers don't like to be technical and the Constitution says we get patents to the inventors and so and actually failure failings to name all your inventors I can actually means your patent gets invalid which means you had a patent you don't have one anymore so it's a very important part and also ownership can always change that's basically think of it like a house you can anybody can buy and sell a house repeatedly but the owner always stays the same are the inventors adventures and next part here is pretty much the most important part of the patent and that's the claims and the claims are really what they say are it's what I claimed this so as we can see our pogo ball patent right here it's a little interesting it will go back into a bit more of what a kleenex the parts of a clean bust did you hear an amusement device comprising and all of these parts and this is the most and this really defines a scope of your invention and because a lot of people think about patent has just passionate and protecting one single invention but generally what most people want is they want the bright the broadest scope possible and that's basically I only I not only want my invention by one also a little bit more and that's why you're kind of dealing with the Patent Office is you're always trying to get a little bit more than what they're trying they're willing to give you and the next most important part is the specification and it has two parts to it is the written description and enable mat and written description is where you're actually going to tell even though patents are for public disclosure you're writing a package with to a specific audience and that's a person of ordinary skill in the art and basically if you're writing a chemical padding you're gonna write it for a chemist because not necessarily everybody's going to understand all the chemical terms that somebody would no or I'm Brees gonna know how to make a chemical composition so the average 20 maker is it going to necessarily know how to make a toy and this once again goes back to the pokeball packing as you can see here he's really just described how you would make it and how you would use it and as we mention it's always good to have Pickers and they can be quite varied here we have a rock-paper-scissors card game you can try to patent that we have an anti eating face mask and we also have a device to help your golf swing very that's also is you kind of the different types of things you can patent as well and now probably the most important another issue of patents is the requirement of novelty and non-obviousness and those can get really kind of technical so first the most thing we're going to talk about is prior art and that is Pat it in non passionated references anywhere in the world that can be used against you because one of the first things we're going to talk about is novelty and that is your invention is new because and that's where the prior art will come in so as I mentioned we're going to talk a bit more about the structure of a claim so the first part is the preamble and that's kind of just the introduction of what your claim is so I'm claiming an abused mint device and as you can see here we labeled out elements so the elements are elastic ball a rigid platform of flexible handle and means for mounting the handle so those are the four elements of this claim and what a novelty mean if your so when anticipation means is one Pat one source somewhere says has all four of these elements in your invention is anticipated or basically not new and what not obvious 'no siz is say you have two different resources that have this these to reach these two elements and these other two elements and what that means is i can combine these two elements to get or i can buy and combine these two references and i have your invention so your invention is not obvious and that's a really layman's terms way of explaining it can get a lot more technical because another issue is well what is obvious to the person of ordinary skill in the art and that kind of can get into weeds of a bit more as we talk about your dealings with the USPTO so let's and let's get to that so you filed your a patent application and normally what happens is you get in office accident and what an office section is is yeah so you and is basically a rejection of your patent and that's fairly normal in fact whenever you file an application you're expecting a rejection and it's very important to know that is to not be worried is it the reason why is as I mentioned earlier you you're for the most part you're trying to get the broadest scope possible and the PTO doesn't like that they're always trying to like narrow down with what you give them so that's this whole dealing and negotiation process so yeah so the first office so you get to office actions when you first file your application one is called non final the last one is called final but it's not really final we'll go a bit more into that since that bit later but basically when you get your first office action you normally have three options you don't really do three things you can make an argument to examiner that they're mistaken that no this isn't obvious or no this isn't this is novel or you can amend your claims which means you're gonna change your claims that's in a way that the examiner is gonna allow them to go forward or you're gonna cancel your claims is this basically they weren't worth it let's just move forward or yeah and it's weird to note that in the first three months you have you don't have to pay any fees this is great so you try to do it within the first three months but ever east month afterwards you have to pay an additional fee and you have to file that and you have up to six months and if you don't do it within six months then you're in a bit of trouble and as you can see we have those peas listed and we're gonna assume moving forward that we got this in the three months so we're gonna stay at eight hundred dollars so and now has I missed you're going the final office action with Suzanne final it's just something that they always do or from the most part because you're always kind of expecting a back-and-forth with the USPTO so so when you that happens we're gonna do move on to probably are normally what we're gonna do is do a request for continue the examination and that basically means we're just gonna start this whole office action process all over again we're gonna file this and we're gonna get to more office actions and we're gonna respond to those office accidents and we're gonna assume we did that and we're gonna do we're a small entity and we only had to do one so we have $600 for the RCE and we're up to 1,400 now a bit so and the other option is an appeal and this is a bit more expensive as you can see we're we've won from about eight hundred dollars or sixteen hundred finally RCE to thirty to fifty because we and because what an appeal is is that instead of working with the examiner you're gonna go to a three panel dress at the USPTO this normally happens sometimes if the examiner isn't if you're really in a contested contentious relationship with the examiner you're you're calling him your do this back and forth and you're realizing there isn't any point and if you really want your package this was probably may be the better option so a but you're gonna try to avoid this because as you can see it can rack up the expenses can go up pretty quickly and the other option this kind of is always available at any time in the patent process is abandonment and basically if you realize maybe you're spending too much money in the end maybe you realize you didn't really need a patent or you don't want to patch it anymore and basically and that all you have to do is just stop communicating or stop paying your fees and the USPTO is gonna say we're just consider this abandoned it is important to note that you can't inadvertently abandon if you don't pay your fees or you don't respond to time so as I mentioned the office action you get six up to six months to respond so if you don't respond with it six months you have abandoned and you have to go through you know there's a form and a fee associated with everything so if you did and want to invent and you're gonna have to pay some more so first off let's just assume that we only needed that one RCE and that we filed that we were able to come any objections at the patent office and we got a notice of allowance which is important to note that a noticeable line which means okay you Bri we're gonna allow you to patent something but first you need to pay us these when the first three months wouldn't after we send it and it's very important to know that and notice of allowance doesn't mean your patent is good it's this means that once you pay the fee will issue your padding so we're gonna pay four hundred and eighty dollars there and bring our total up to eighteen eighty and so now our patent issues after we paid our fee and like we mentioned earlier that can be forty two months from the filing date and that's that once again that date can vary dramatically depending on what you're patenting and other issues involved and we're just going to kind of go over these last two really quickly so patent term and maintenance fees and as you mentioned the patent term is twenty years from your filing date and to have your patent be enforced through that time from when it is used all the way to the end of the filing date you need to pay your maintenance fees at three and a half seven and a half nine eleven half years so once again we're gonna assume we paid all of these fees and we kept our patent alive through the entire term so at the end of the day we spent eight thousand one hundred and eighty dollars and after issuance there's a couple things you can do after you're packing issues and post issuance review is something that can happen at the USPTO is so what a stairway of trying to maybe you heard a lot of like issues about patent litigation and house going a bit more crazy they're trying to have the USPTO caroled out a bit more so that's not doing in the courts and another thing you can do is reissue and maybe you wanted more and you can broaden your patent scope within two years from the issuance date so maybe you want if you realize you mean I'm mistaken you needed this extra part or you want to do that you have within two years from when you're packing easy just try to get that extra subject matter and this is the contact information for the ELC if you have any questions or need any more [Applause] any questions so it kind of depends on ye so you said an adventure specifically so it kind will depend maybe on why you're doing it is it because maybe you didn't realize you had another adventure or yeah so the question was what is I kind of the deadline or the time and wish you would add an inventor say maybe if you just realized somebody is an inventor or something of that yeah so the answer is there's no set deadline but the sooner the better and also if for some reason you intentionally left an adventure game off of that that's another issue because there's something called inequitable conduct and basically that means when you're filing with the USPTO you're kind of under this studio I'm telling you the truth everything I'm doing is to the best of my knowledge and if that's and if that happens they will also invalidate for that like you kept something from us so that's another grand validation so you're so you filed a patent already and now you added additional subject matter and you'd like a second patent on that additional subject matter so is this like are you talking about like a reissuing is like my this is part right here or yes yeah so the question kind of is if you basically I think the question overall is if you want to add more subject matter to a patent either through a reissue or through another patent application what do you do I think you typically file a continuation in part and you would have it would be a separate patent right but it would have the additional information and you'll bring in all the other material you had from the previous application is that typically what you do and if you do file a continuation part you're also going to have a new you're gonna have the inventors that contributed to the idea for that application no that's just for the USPTO a lot of yeah so the second step is you're probably gonna pay attorneys something to help out if you go through if you're if you're for example need to assign this to university university has a lot of resources through commotions that can help you out but yeah if you're just an independent inventor typically you're gonna have additional attorney fees yeah it is that's and that's something you have to think about in terms of going back and forth of the examiner and finding the best set of claims when going through the little yeah a provisional application would satisfy the one-year application date so if you tell us if you tell your friend without you know any kind non-disclosure agreement you know a year and a day before you follow your provisional application then you have a problem if it's you know less than that if it's a year or less and then you follow your professional application you're fine that clock starts ticking starts ticking when you tell the person or you disclose but yeah as long as you within that year file either provisional or full utility then you're fine you yeah it's problematic they would be fine yeah yeah just be careful about disclosing information because we are first to file system so somebody at that conference that they're you know not a good person might take that information and follow it for themselves so just be yeah be thoughtful about who you tell information yeah so the question was can you after a 20-year term can you burn you a pageant no that's kind of like with the the whole point of it was is that you get this time of exclusivity where you can kind of do what you want in the market but after that time you don't get it and so anybody can use the technology at that point so the question was like if someone wants a license of pathetic technology how does the maintenance fees so the maintenance we use is for the patent owner specifically that is that is what they had to pay to keep the patent enforce licensing is kind of completely up to the two parties that want to do that license so that's completely separate well I so you finally application and you name the inventors if you have done that improperly then there is a mechanism there's an internal mechanism within the USPTO that you can challenge that but you're signing a declarations that says you're the inventor did you guys want to add something oh so there are certain circumstances like age being one of them and I think if your invention goes to a certain disease or like there's there's a song category people that can file an extra document and have an expedited review process but other than that it really just depends on what your technology is so if it's pretty complex it will probably take longer the other thing is if you're a startup you can as long as you're not infringing somebody else's patents you can use that technology and once you're patenting issues then you can't you have a potential for action against anyone else who uses your invention but yeah I mean there is that window so you just have to be thoughtful about that so I'm not an expert in that but I do know there's what's called a PCT application and it's like patent cooperation treaty is like multinational and typically you'll file in some particular country like you can file in the US for example but there's specific documents that you have to file that indicates this is for a PCT application and that timelines are a little bit different but all this information is definitely for US patents [Applause]