The Five Ws

Posted on March 10, 2015 by

I was recently asked to speak on a SheStartsLaw 101” panel for startups, with a focus on intellectual property and software patents. In preparing for this event, I realized how important I believe it is for anyone considering investing in patents to interrogate themselves as to their business objectives/motives as early as possible. That means really digging into the details of the five Ws:

Who are you? Whether you’re an inventor in a garage or in-house attorney at a large, innovative organization, it’s important to ask where this effort is going. Are you the kind of company who wants to go solo, bootstrapped for as long as humanly possible? Want to get angels and then VCs on board ASAP? Plan to keep this private or to IPO? Going up against litigious competitors or contributing to an open source ecosystem? All of that impacts your decisions regarding IP.

What did you invent? Honestly. What have you come up with that no one else has developed in all the long history of people sitting at their computers, coding away late into the night? What’s the competitive advantage? What’s the hook? Because if you are not able to identify a specific, technical innovation supported by solid reasons why no one else has arrived at this solution, you are going to have a challenge pursuing the kinds of patents that will help further your business objectives.

Where are you in the innovation process? Is it so early that you have an idea and a good plan for testing whether it will work? Far enough along that you’ve figured out how you’ll make this work, even if you don’t yet have a prototype? So far into it that you have sold products and are now developing additional innovations, improvements over your original ideas? All of this impacts your IP strategy as well.

When do you plan on disclosing the invention? This is a really critical question that a lot of innovators don’t know to focus on. If you plan on talking about the invention – whether it’s to your two best friends at an upcoming BBQ or to 100 of your new best friends at last week’s hackathon, patent offices in the US and around the world really frown on the sharing of inventions and over-sharing can lead to a prohibition against later filing of patent applications.

Why do you want a patent? To check a box? For resume building? As part of a multi-pronged, strategic approach to running a company? Patents are expensive, time-consuming resources to pursue. They can be the best, most valuable assets a company owns – or a complete waste of time and money. Figuring out your internal motivations for pursuing one can help you understand whether to start down the path and how far to go.

There are no wrong answers to these questions and they’re only the beginning of the conversation you and your team and your lawyer should have. It’s your business, your innovation, and how you define yourself and your objectives is personal to you/your team. But undergoing this type of analysis can help you ensure that you are making the best decisions possible in many areas of the business, including your IP strategy.

Naming the “New” Tech Corridor

Posted on July 8, 2013 by

We all know there’s plenty of innovation in Boston and Cambridge – and not just in our beloved Kendall Square and Innovation District, but everywhere in between. Now, thanks to VentureFizz, Jay Batson, and Kinley, we’ve got a great map highlighting some of the Boston-area excitement and an interesting conversation about where the scene is and what to call it. According to this blog post by Jay Batson, the clear unifying factor here is the Red Line, which runs right through this map and on into Kendall/MIT. Now he’s on a quest to update the old “128 corridor” name with something that fits the current startup scene and unifies both sides of the Charles. VentureFizz is helping collect name suggestions – feel free to tweet them over to @VentureFizz.

The complete Boston Startup Map

Kinvey Backend as a Service

International Patent Filings

Posted on May 24, 2012 by

Vintage globe

There are well over 140 countries in which you could file patents!

A patent is only valid in the country in which it was filed. If you have a US patent and have an infringer based out of Canada, you won’t be able to stop them with your US patent. (A great example of this is in the RIM/NTP Blackberry patent infringement case – for some of the claims, RIM didn’t infringe because their servers were in Canada). However, since filing patent applications in every single country on the planet gets pretty expensive, you should understand your options for managing costs and making smart filing decisions.

The PCT application is one tool to preserve your options affordably. Over 140 countries have signed a treaty to cooperate with each other on patent filings and make it easier for their citizens to protect inventions abroad. Applications filed in accordance with the treaty are known as Patent Cooperation Treaty Applications (“PCT apps”). If you live in one of those 140 countries (which you probably do, since they include most of North and South America, most of Europe, Australia, and most of the Asias), you have one year from the date on which you file an application in your home country to file a PCT application, which gives you 18 more months to decide in which of those 140 other countries you’re going to file your application. At the time that you file an application in your home country, and even a year later, it’s often way too early to know whether the product or feature incorporating the invention is going to be successful enough to warrant international patent protection. Therefore, most companies decide to file the PCT application and preserve the option to file internationally.

At 30 months from the original filing, you have to make your final decision about where to file – no extensions. At this point, look to revenue, client base, and competitor locations to make your filing decisions. Got a huge client base in Europe, 90% of revenue coming from Singapore, an Australian investor that wants you to expand in Southeast Asia, or a big competitor in Canada? Those are all signs that you may need to invest in filing patents in those countries or regions. On the other hand, if you’re still boot-strapping the company, haven’t got much revenue anywhere outside your home country, or have an extremely country-specific technology, you might decide against making the investment. As with most patent-related decisions, look to your business objectives for guidance, consult with your attorney, and make the best decision possible given the resources available.

Who really owns that patent?

Posted on March 10, 2012 by

Caution sign

Worried about employee assignment clauses? Maybe you should be. It’s time to take another look at the assignment language used in that template employee agreement you downloaded, since it could significantly affect your rights as an intellectual property holder years from now.

You need to own a patent before you can enforce it against others. In the US, inventors own the rights to their inventions until they explicitly assign the rights to someone else. If your employees don’t assign the rights over to your company, you don’t actually own that key patent. And if you intended to use it as a signal to investors or strategic partners, the first thing they’ll check is whether you own what you say you do. This is because the only way to enforce your patent is through a lawsuit where you request an injunction and/or damages from infringers – but, if not all of the inventors are listed as part of the suit, your case will be summarily dismissed. So, if you can’t gather all the inventors on a patent when you go to litigate, it is essentially unenforceable, and therefore useless. Between the nature of growing companies and the realities of a highly mobile workforce, it’s not uncommon for an employee or even a cofounder who invented key intellectual property to be long gone when a company decides to use that patent. This can be a real issue – especially when a company has invested a significant amount of time, effort, and money into its patents.

There are two ways to deal with this issue. One way is to have each inventor specifically assign the rights to the company after filing any patent applications, which may not be as easy as it sounds. The most common challenge arises when an employee was part of the inventive team but left before the company decided to file the patent application. In other cases, the employee may have (or suddenly develop!) a philosophical aversion to patents and/or start negotiating for additional compensation in exchange for their signature. You can avoid these issues by having employees assign their rights to the company in writing as part of your standard employment agreement. That way, any inventions arising during their employment will automatically be assigned to the company, alleviating any uncertainty.

However, the wording of that assignment needs to be precise – only a slight difference in the wording of an assignment clause in an employment agreement can render it void. The phrase “agrees to and does hereby grant and assign” is wording that will automatically assign an employee’s interest in later developed inventions to the employer. On the other hand, the phrase “agrees to execute any and all assignments or other transfer documents” is just an agreement that the employee will eventually sign the rights over but the phrase defers the actual transfer of rights to some point in the future. If this latter step is never taken, no assignment ever occurs. The distinction is slight, but the results can be disastrous – potentially resulting in an unenforceable patent.

This post co-written by Cynthia Gilbert and Hyperion Law’s Spring 2012 Intern, Kip Bodi. He is currently a third-year evening student at Suffolk University Law School with a concentration in Intellectual Property and Patent Law. He holds an M.S. in Bioinformatics from Boston University and a B.A. in Computer Science from Colgate University.

Timeline of Patent Filing Decisions

Thinking of filing a patent application? On top of having to make decisions about whether and what to file, you’ve also got a limited amount of time in which to file. If you’ve gone through the challenging process of deciding what is worth protecting, from both an innovation perspective and a business perspective, and decided you do indeed want to file, the last thing you want to hear is that you’ve waited too long and lost your right to file. Even once you’ve filed your first application (which is often a provisional), there are a number of decisions to make regarding whether to formalize provisionals and whether to file outside the country. This timeline provides an overview of the decisions you’ll need to make:

Timeline of patent-related decisions

Notice how the timeline changes if you don’t decide to file until after you’ve made a public disclosure:

You’ll have set a new, 12-month deadline for filing any US applications and may have lost the right to file internationally. Now, you may or may not need to file patent applications, but ideally that would be an informed decision – not because you didn’t know that doing that beta test would mean you couldn’t file later!

Notice that at the moment, most applicants for technology patents won’t hear from the US Patent Office for years from the filing date. This means it’s particularly important for you to consider what the benefits are to filing an application – you want to be really clear on those benefits before making that investment.

Whether or not you decide to file any applications, keep an eye out for these deadlines to give yourself enough time to make educated decisions.

Getting 2012 off to a social start

This past Wednesday was the first Mass. Innovation Night event for 2012 and I was thrilled to stop by and support local entrepreneurs. If you haven’t already heard about this you should check out the web site and stop by one of the events. At each event, about ten companies get selected to show off their products. From those ten, the community votes for four companies to give five-minute pitches to the entire group. One company that stood out to me on Wednesday night was GivingSomeThing, an online donation platform where non-profits can create Amazon wishlists for goods and donors can buy and ship the goods right to the non-profit via the familiar Amazon system. Pretty interesting platform! Check out their bio on the Innovation Nights site, here, for more info.

The Innovation Nights events are a great opportunity for companies launching new products to give demos, perfect their pitches, and get feedback from a group of entrepreneurs and service providers. It’s also a chance to get to know start-ups, experts, and friendly faces from around the entrepreneurial ecosystem. The next one is at the Microsoft NERD Center in Cambridge on February 8 – join us!

Hyperion Law in the New York Times!

"Microphone with 'On Air' light"I’m excited to share that Hyperion Law was in the New York Times! Hyperion law shows up on page 2 of this article on entrepreneurial attorneys.

It’s thrilling to get coverage in such a prestigious paper on a topic I’m passionate about. I have a huge amount of respect for my friends, mentors and role models in large law firms, and believe that there are good lawyers to be found in large firms – but I also believe the large firm model doesn’t work well for all clients. So it’s important to me that people know that there are viable alternatives to work with equally qualified attorneys.

Special thanks to Garrett Dodge of Roqbot and Bobbie Carlton of Innovation Nights, who let me know about the opportunity to speak with the New York Times, and to Eilene Zimmerman, the author of the article!

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Thank you!

Thanks :) Another Thanksgiving holiday, another opportunity to reflect on how appreciative I am of my community. As I continue my quest to passionately provide outstanding service to clients I believe in, I feel particularly grateful for all the support and encouragement I’ve received from so many of you. Whether it’s retweeting a message, sharing a blog post, trusting me with your work, acting as a sounding board and providing feedback on my process, or just being an enthusiastic member of the community, you (yes, you!) make a difference and I’m thankful. Happy holidays!

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Prior Use Rights – a double-edged sword

Chess piecesOne interesting aspect to the new patent law is the section relating to prior use rights.

If you are a small company who hits on a great way of doing things but can’t afford to patent it, and someone, years later, gets a patent for that exact same technology and tries to sue you for infringing their patent, you can now defend yourself against infringement with the expanded prior use rights. You couldn’t do this before except in very limited circumstances involving business method patents and the new law has expanded this right. To take advantage of the defense, you yourself have to have been using the invention in commerce for at least a year before the patent holder filed her application – you can’t just assert that “everybody” was using it although you yourself weren’t. If you can do this though, you have a defense to infringement.

Prior use rights is a double-edged sword however. There are two related ways in which misuse of this right can impact companies:
1) “Stealth Prior Art” – A competitor can invent technology, keep it a trade secret, and then later prevent a patent holder from enforcing a patent by showing that the competitor used the technology in commerce before the patent holder filed for the patent. In this way, the competitor acts as “stealth prior art” – no one knew how their technology worked or that they were using it in this way, the market wasn’t benefiting from having knowledge about this technology, and when a party that actually did disclose the technology to the public tries to enforce their patent, they are now faced with this secret prior use that weakens the utility of their patent, at least as to the stealth competitor. There’s something unsavory about the potential for abuse in this type of scenario. For a more detailed discussion of the ways in which prior use rights can be misused, you should check out IP Watchdog’s series of articles on this topic.
2) Pressure to file earlier – one clear way to deal with the possibility of stealth competition is to file as soon as you possibly can, which puts more pressure on already-constrained patent budgets.

Prior use rights can be an extremely helpful way in which small companies can defend themselves against companies that have more funding and can afford more robust patent portfolios. Unfortunately, as is often the case, there are still ways in which a useful tool can backfire. This is a potentially troubling, and somewhat controversial, aspect of the new law that the industry will be watching with interest.


Steve Jobs

© Imagecollect |

I want to join the rest of the world in mourning the loss of Steve Jobs and offering my condolences to his family. Like so many of us who are in technology-related work, or who love elegant, well designed devices that just work, my life and the world I live in has been indelibly changed by Steve Jobs.

I have been immersed in the world of technology since before I can remember. I learned to tell time with one computer game and did reading comprehension exercises with another one; I was reading lines of code before I could write my name in cursive. However, even though I’ve never lived in a world without computers, I have lived in a world where technology was unfriendly, hard to use, and not for the uninitiated; a time and place where people were turned off by the mysterious and challenging pre-reqs for leveraging the technology’s power. It’s a wondrous thing, then, to look around and see a world where grandmothers take it for granted that they can use FaceTime to see their grandchildren’s baby steps, where toddlers are tracing out their ABCs on an iPad, and where the technologically unsophisticated of any age can install an application on a mobile device and use it to make their lives more productive, more efficient, or even just more fun. In short, many of us have access to technology that really does enable us to live life as depicted in a sappy Apple commercial – and the progress we’ve made has without doubt been furthered by Steve Jobs. I count myself lucky to have seen the world before and after him and the technologies he brought to the mass market, to have seen the impact of elegant, accessible design, and the impact of even a little bit of competition on staid marketplaces. He has truly lived a magical, revolutionary life and I’m grateful for every minute he was here.

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