The guest speaker was Dr. Jasemine Choy Chambers (OF COUNSEL, Wilson Sonsini Goodrich & Rosati Professional Corporation) and she would like to share “What is Intellectual Property (IP)?”, “IP Strategy for Start-Up Companies” and “Practical Tips for Filing Patent Applications”.
Firstly, Dr. Chambers quoted Harvey S. Firestone (American businessman) that ideas are the most important in business. Then she introduced four forms of IP that were Patents, Trademarks, Copyrights and Trade Secrets.
Trademark (e.g. Coca Cola, 7-up etc.) is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party form those of others. (Where service mark is the source of a service rather than goods)
Copyright protects works of authorship such as writings, music and works of art that have been tangibly expressed.
Trade Secret (e.g. Coca Cola formula) is a formula, practice, design, instrument, pattern or compilation of information that is not known by competitors or customer to keep an economic advantage.
Patent (included limited term and fix term) conveys the right to exclude others from making, using or selling the claimed invention for the term of the patent.
The following diagram showed more information on “Patents” and usually the term of a patent had 20 years (roughtly) from filing. Moreover, Dr. Chamber emphasized the Patent Cooperation Treaty (PCT) which provided a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT would be called an international application.
There were several requirements for patentability below:
- New/Novel (Don’t publish before filing!)
- Useful or Industrial Applicable
- Non-obvious or Inventive Step which is a function of time and early filing limits the amount of prior art
- It should be described to the world how to make or use the invention (Freedom of Operate)
- It should also tell the world the BEST way to make or use that invention.
Then Dr. Chamber quoted the famous example of high value technology patents through Apple against Samsung.
Dr. Chamber then explained why IP was so important to start-ups. It was because IP was start-ups most valuable asset for their most early-stage. Therefore, focusing on securing, maintaining, and expanding a company’s IP portfolio substantially increased the chances of business success. When investors decided to fund a company, they would examine three main factors:
1. Potential profitability of the company’s product(s)
2. Breadth of the IP portfolio covering the product
3. Freedom to Operate (FTO) (which means determining whether a particular action, such as testing or commercialising a product, can be done without infringing valid intellectual property rights of others.)
The following diagram showed the value of IP to a start-up.
Finally, Dr. Chamber introduced the IP Strategy for a Start-up as following:
1. Integrating IP strategy into business plan
2. Building an IP estate (Filing/Buying/In-licensing patents)
3. Performing IP Due Diligence (Check inventorship/ownership/scope of patent protection)
4. Conducting Freedom to Operate (FTO)
5. Teaming with IP Counsel
Q&A
Many incubatees asked question about IP filing. Dr. Chamber gave some tips before you file your patent application below:
- Do not publish a description of your invention.
- Do not sell your invention or offer it for sale more.
- Do not allow your invention to be in public use.
Reference:
HKSTP - http://www.hkstp.org
WSGR - http://www.wsgr.com/WSGR/Default.aspx
Firstly, Dr. Chambers quoted Harvey S. Firestone (American businessman) that ideas are the most important in business. Then she introduced four forms of IP that were Patents, Trademarks, Copyrights and Trade Secrets.
Trademark (e.g. Coca Cola, 7-up etc.) is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party form those of others. (Where service mark is the source of a service rather than goods)
Copyright protects works of authorship such as writings, music and works of art that have been tangibly expressed.
Trade Secret (e.g. Coca Cola formula) is a formula, practice, design, instrument, pattern or compilation of information that is not known by competitors or customer to keep an economic advantage.
Patent (included limited term and fix term) conveys the right to exclude others from making, using or selling the claimed invention for the term of the patent.
The following diagram showed more information on “Patents” and usually the term of a patent had 20 years (roughtly) from filing. Moreover, Dr. Chamber emphasized the Patent Cooperation Treaty (PCT) which provided a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT would be called an international application.
There were several requirements for patentability below:
- New/Novel (Don’t publish before filing!)
- Useful or Industrial Applicable
- Non-obvious or Inventive Step which is a function of time and early filing limits the amount of prior art
- It should be described to the world how to make or use the invention (Freedom of Operate)
- It should also tell the world the BEST way to make or use that invention.
Then Dr. Chamber quoted the famous example of high value technology patents through Apple against Samsung.
Dr. Chamber then explained why IP was so important to start-ups. It was because IP was start-ups most valuable asset for their most early-stage. Therefore, focusing on securing, maintaining, and expanding a company’s IP portfolio substantially increased the chances of business success. When investors decided to fund a company, they would examine three main factors:
1. Potential profitability of the company’s product(s)
2. Breadth of the IP portfolio covering the product
3. Freedom to Operate (FTO) (which means determining whether a particular action, such as testing or commercialising a product, can be done without infringing valid intellectual property rights of others.)
The following diagram showed the value of IP to a start-up.
Finally, Dr. Chamber introduced the IP Strategy for a Start-up as following:
1. Integrating IP strategy into business plan
2. Building an IP estate (Filing/Buying/In-licensing patents)
3. Performing IP Due Diligence (Check inventorship/ownership/scope of patent protection)
4. Conducting Freedom to Operate (FTO)
5. Teaming with IP Counsel
Q&A
Many incubatees asked question about IP filing. Dr. Chamber gave some tips before you file your patent application below:
- Do not publish a description of your invention.
- Do not sell your invention or offer it for sale more.
- Do not allow your invention to be in public use.
Reference:
HKSTP - http://www.hkstp.org
WSGR - http://www.wsgr.com/WSGR/Default.aspx
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