Startup Law A to Z: Intellectual Property; TechCrunch, February 25, 2019

Daniel McKenzie, TechCrunch; Startup Law A to Z: Intellectual Property

"Whether protected through copyright, trade secret, trademark, or patents, software technology companies depend on IP more so than perhaps any other business type in history.

It is surprising, then, just how little founders think about protecting their own IP. Sure, “product-market fit” is an all-engrossing search for truth that tolerates no distraction, but that is at best an explanation, not an excuse.

The real pros will find product-market fit while documenting and protecting IP along the way — it’s the only way to ensure you own your work, after all.

This article provides an overview to help you think about where your IP sits, how to protect it, and how to avoid certain pitfalls that plague far too many startups."

Intellectual Property The Hard Way: Part II; Forbes, September 11, 2018

Mary Juetten, Forbes; Intellectual Property The Hard Way: Part II

"Last month I started an interview series on intellectual property (IP) and also wrote a piece about general IP tips for startups here.  The goal is to use actual stories and experts in the field to help others avoid IP mistakes or failures or infringement, and more importantly to ensure that companies of all sizes identify, protect, and monetize their valuable intangible assets. As has been discussed many times, these assets often make up 90% of a startup’s valuation."

Best Practices For Developing, Managing And Protecting Your Company's Intellectual Property; Forbes, August 16, 2018

Chalmers Brown, Forbes; Best Practices For Developing, Managing And Protecting Your Company's Intellectual Property

"Every company has some type of intellectual property (IP). It's that product or service that you have developed that sets you apart from other companies and frames your business, its purpose and its growth potential. Therefore, you want to keep developing, managing and protecting that IP in a way that drives more value and stimulates sustainable growth. It's also important that there is some type of exit strategy in place since most companies are acquired primarily due to their IP assets.

As someone who's created my own startups and is now working with others on theirs to help develop technology, I've gained a greater understanding of how to take care of these assets as an IT executive so that I might provide others with best practices to implement with their own IP. Previously, I did not prioritize IP in the way I should have. Here are some best practices to employ:"

New Vice Chancellor Named as Pitt Marks Another Record-breaking Year in Innovation; PittWire, August 1, 2018

PittWire;

New Vice Chancellor Named as Pitt Marks Another Record-breaking Year in Innovation

 

"These and 20 other innovative and impactful discoveries — all developed at the University of Pittsburgh — were the basis for the formation of 23 startup companies that were formed, or “spun out,” in fiscal year 2018, according to Pitt’s Innovation Institute. The institute is headed by Evan Facher, who held the position of interim director until being named director and vice chancellor for innovation and entrepreneurship earlier this week...

 “It’s a big deal that universities are now developing the technology that’s going to propel us into the future,” said Joe Marcanio, who has been guiding University innovators as an Innovation Institute entrepreneur-in-residence since 2015. “My job is to stand behind them and help them avoid the mistakes I learned the hard way.”...

The year in kudos

Pitt rose to No. 21 — up from 27th last year and 35th in 2015 — among the top universities worldwide to be granted U.S. utility patents for a new or improved product, process or machine. Neighboring Carnegie Mellon University, a fellow anchor in Pittsburgh’s innovation ecosystem, was No. 40 in annual rankings compiled by the National Academy of Inventors and the Intellectual Property Owners Association.

In March, Pitt alumnus and trustee Bob Randall (A&S ’65) announced a $2 million gift to accelerate student entrepreneurship through the Big Idea Center at Pitt.
A new Innovation Igniter workshop outlines the path to licensing an innovation or forming a startup company. The two-hour workshop is open to faculty, staff and students who are curious about commercialization.

The first cohort of a revamped Blast Furnace student accelerator program completed the nine-week program in June. Ten teams pitched their business ideas at a June 29 final event at the University Club. The Innovation Institute will host @PITTINNOVATES Open on Sept. 20 to introduce its 2018-19 academic year programming and funding opportunities.

Finally, the Innovation Institute came home a winner from the recent Deshpande Symposium for Innovation and Entrepreneurship in Higher Education, receiving the 2018 Exemplary Practice in Technology Commercialization Award in recognition of its work in accelerating innovations to the market."

Intellectual property basics for startups: trade secrets; DLA Piper via Lexology, June 27, 2018

Victoria Lee, DLA Piper via Lexology; Intellectual property basics for startups: trade secrets

"The crown jewels of a typical technology company are often found in its intellectual property portfolio. Having a good basic understanding of intellectual property protection is essential for entrepreneurs to extract value out of their company’s key assets and manage opportunities and risk arising from them. Among these key assets is the trade secret.

Our colleague Victoria Lee outlines what startups need to know about trade secrets in this article."

In tech, patents are trophies -- and these companies are dominating; CNN, June 19, 2018

Seth Fiegerman, CNN; In tech, patents are trophies -- and these companies are dominating

[Kip Currier: This CNN article has a link to an interesting 2 min. 6 sec. video, "Patents: A history of innovation", highlighting some examples of U.S. patents, from the 1st one--to a Philadelphia inventor for potash in 1790 and signed by Pres. George Washington--to the 10 millionth, issued to a Raytheon employee on June 20, 2018.]

"Google, Apple, Amazon (AMZN) and others are pushing forward with a range of new patents touching on artificial intelligence, cloud computing, drones and virtual reality, according to an analysis of patent activity late last year from CB Insights.

"I do think more recently, companies -- especially startups -- are realizing that just being a cool application is not enough," says Ethan Kurzweil, a partner at Bessemer Venture Partners. They want to be "inventing some core piece of technology, whether it be AI, machine learning, autonomous driving, or computer vision. ... Patents will matter a lot more in those contexts.""

More Patent Trolls Are Targeting Startups. Here's What You Can Do.; Entrepreneur, April 10, 2018

Nathaniel Borenstein, Entrepreneur; More Patent Trolls Are Targeting Startups. Here's What You Can Do.

"Startups aren't typically founded by lawyers, so patent law isn't usually a front line issue for them. But I've come to realize that patent protection is at best No. 11 on the top 10 list of things for startups to focus on -- something they generally understand is important, but not quite important enough. Part of that is because the headlines focus on big lawsuits lobbed at big companies, which creates a false sense of security. As an inventor and a computer scientist with 25-plus years of practical experience, I'd like to think I've navigated the murky, complicated world of patents and come out on the other side wiser and more informed. And, as such, there is something I want entrepreneurs, inventors and early-stage businesses to know. Yes, you are a potential target for patent trolls, and yes, there is something you can do about it. Today."

Why an Indian hotel startup is taking the difficult route of filing patents; Quartz, March 28, 2018

Ananya Bhattacharya, Quartz; Why an Indian hotel startup is taking the difficult route of filing patents

"India and patents

High costs, lengthy processing periods, and a general lack of awareness are huge deterrents for startups eyeing patents in India. Gaps in the system, like a shortage of examiners, have caused hundreds of thousands of applications to pile up.

“Filing patents is common practice in other parts of the world but the importance of filing patents has only of late become apparent to startups in India,” said Anindya Ghose, the Heinz Riehl professor of business at New York University. Shorter processing times for intellectual property (IP) rights applications, an 80% rebate on patent fees for startups, and more transparency around the system are helping.

However, the country is still ranked an unimpressive 44th out of 50 in a score of IP robustness compiled by the US Chamber of Commerce (pdf) this year. “India’s score continues to suggest that additional, meaningful reforms are needed to complement the Policy,” the federal entity said."

Patent Trolls Target Small Businesses With Lawsuit Threats. Here's How One Startup Fought Back; Inc., February 22, 2018

Minda Zetlin, Inc.; Patent Trolls Target Small Businesses With Lawsuit Threats. Here's How One Startup Fought Back

"Why are they targeting small businesses?

For years, these entities made their money by suing or threatening to sue large corporations with deep pockets. This worked well because they could take advantage of the rule that companies can be sued anywhere they do business, and large companies tend to do business in every state. Patent trolls found a few federal court districts where they had greater odds of winning. From their point of view, life was good.

But in May 2017, the Supreme Court issued a ruling that companies could only be sued for patent infringement in the state where they reside. That made collecting much harder for patent assertion entities. Many turned their attention to small companies and startups for which the cost of defending a patent case could pose an existential threat. They began sending letters containing a simple proposition: Pay us a (relatively reasonable) one-time fee and we'll sell you a permanent license and drop our planned lawsuit."

Waiting to Protect Intellectual Property Could Doom Your Startup; Kellogg Insight, August 3, 2017

Mark McCareins and Pete Slawniak, Kellogg Insight; Waiting to Protect Intellectual Property Could Doom Your Startup

"Based on insights from Mark McCareins and Pete Slawniak

It pays to be certain your idea is original.  

McCareins: A prior art search needs to be done to make sure that what you’re getting patented is really and uniquely your own.  There may be a temptation not to do a comprehensive search because it's expensive, but you don’t want to find out later that someone had the same invention.  

People say, “Well I got a patent so I’m good to go,” but that’s only half the battle. Even when the U.S. Patent and Trademark Office has granted a patent, that doesn’t mean a federal court might not come in later and invalidate that patent based on another party’s complaint.  

Slawniak: When you file a patent, look around and do a search. See what other folks in the industry are doing. See what other patents are out there. Read the scholarly work around technology in your field and have some conversations with people in the industry. Your patent is a reflection of your R&D investment and your technological advantage, so it's important to know exactly where that product differentiation is. An exhaustive search will ensure you have a strong patent, and hopefully help your patent issue faster. When you have something you believe has value, it’s worth the investment of time to develop and protect it. "

‘Bombshell’ Canadian Patent Ruling Seen Favoring Foreign Companies; Bloomberg, June 30, 2017

Josh Wingrove, Bloomberg; ‘Bombshell’ Canadian Patent Ruling Seen Favoring Foreign Companies

"“It’s a bombshell of a decision,” said Richard Gold, a law professor at Montreal’s McGill University who studies intellectual property. He’s a member of the university’s Centre For Intellectual Property Policy, which intervened in the case. “We’re now the only country in the developed world that when an inventor says, ‘my invention does X,’ it doesn’t actually have to do X.”

The Supreme Court ruled that a current standard, known as the “promise doctrine,” goes too far, because it allows for patents to be invalidated if an invention doesn’t do any of the things it promised."

Pitt Innovation Showcase; University of Pittsburgh, 9/28/16

[Press Release] University of Pittsburgh; Pitt Innovation Showcase:

"The Pitt Innovation Showcase is your opportunity to see firsthand the exciting technologies being developed and moved toward commercialization at Pitt. It is also the opening reception for Science 2016.

Please plan on stopping by Alumni Hall on Wednesday, October 19, from 4-7 p.m. to network with Pitt Innovators, investors, entrepreneurs and members of the regional startup community.

The event begins with the Michael G. Wells Entrepreneurial Scholars Lecture that features this year a panel of leading healthcare entrepreneurs and investors who will give a behind-the-scenes look at getting a healthcare innovation from the lab to the market.

This will be followed by the announcement of the winners of the Wells Students Healthcare Competition and the Kuzneski Innovation Cup.

The Opening Reception and Innovation Showcase begin at 5 p.m. in the J.W. Connolly Ballroom, First Floor.

Come and be inspired by the Pitt faculty, students and staff who are working to make their entrepreneurial dreams a reality and make an impact on the world.

Click here to register."