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.
Thank you for reaching out to contact me! However, before you send your message, I want you to know that simply sending me an e-mail does not create an attorney-client relationship between us. Before any attorney-client engagement may be formed, Hyperion will need to check for possible conflicts of interest and consider whether to accept the potential engagement. Similarly, you will need to consider whether you wish to retain Hyperion as counsel. In the meantime, Hyperion reserves the right to represent parties with interests adverse to yours. Therefore, I ask that you not send me any confidential information in your e-mail. If you understand this and wish to continue with sending an email, please click “ok”ok
I was recently asked to speak on a SheStarts “Law 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.
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.
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:
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!
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!
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!
One interesting aspect to the new patent law is the section relating to prior use rights.
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.