Common Investor Pitfalls with Intellectual Property
and how to avoid them
Your hostsHeidi BrunJoint Head of Patent Department Eitan, Mehulal & Sadot
Zack MillerPartner, Investor Community OurCrowd
Many types of Intellectual Property (IP)
Many types of IP• Patents
• Trademarks
• Designs
• Copyrights
• Trade Secrets
Different types of companies have different
IP needs
Many types of IP
Trade Secret vs. Patent
Due Diligence
Due Diligence• Ownership
• Technology
• Claims
• Where filed
Ownership Issues• Company ownership vs. inventors
• Employees vs. contractors (particularly for software)
• Inventor’s willingness to sign assignments
• Patent laws in various countries vs. US law
Ownership Research• Online at various patent
offices
• Search via company name, inventor names
• http://assignments.uspto.gov/assignments/q?db=pat
Ownership Research
Ownership Research
Technology
Technology• Is it brand-new tech? Or, improvement of a
successful one?
• Does the company have a new take on an old idea?
• How do the claims compare to the product? Are they on only a small part of the product? If so, is this still good?
• What claims/patents do competitors have?
Big vs. small inventions
Big vs. small inventions• Startups concentrate on their BIG inventions
• Do they have other good (smaller) ideas hiding in the patent applications?
• Don’t always claim what can be claimed — applications may have valuable inventions described in applications that haven’t been claimed
Large number of applications/patents
• Is this good? Does it mean that the company is innovative?
• Yes — the company has many ideas
• No — the company is good at defining its one invention in many ways (which may be good…)
• Remember: Some startups write patents knowing investors don’t read them
Technology Research I• Patentability search — Google Patents:
Advanced Search
Technology Research I
Technology Research II• Proviso 1 — any patents found, have to be provided to
USPTO, ILPTO
• Proviso 2 — patents found in search may have broad claims that company’s products may infringe. Need to deal.
• Need to decide for yourself if:
• current claims will issue
• current claims are useful to the company
• current claims are useful to your plans for the company
Patent Portfolios
Patent Portfolios I• Multiple inventions
• Filings in multiple countries
• US only or around the world?
• US investors have a bias to US filings
• On the other hand — the company may file in many countries
• without realising the huge maintenance cost
Patent Portfolios II
• When money runs tight, a startup won’t keep up its patent portfolio
• Investors may have to jump in to keep rights active
Patent Portfolios Research
• Search in Espacenet, Dialog, Thomson-Reuters etc. for patent families
• Check status and any close dates — will the company be able to keep applications alive
Patent Portfolios Research
Patent Portfolios Research
Patent Portfolios Research
Property
• Patents have value which outlives the company
• Patents have a market
Heidi M Brun
Eitan, Mehulal & Sadot +972-2-633-5021 +972-9-972-6000 [email protected] www.ems-legal.com
Zack Miller
OurCrowd +972-2-636-9000 +1-914-617-1026 [email protected] www.ourcrowd.com
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