Transcript
Page 1: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Common Investor Pitfalls with Intellectual Property

and how to avoid them

Page 2: [webinar] From Ideas to Assets: 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

Page 3: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Many types of Intellectual Property (IP)

Page 4: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Many types of IP• Patents

• Trademarks

• Designs

• Copyrights

• Trade Secrets

Different types of companies have different

IP needs

Page 5: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Many types of IP

Trade Secret vs. Patent

Page 6: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Due Diligence

Page 7: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Due Diligence• Ownership

• Technology

• Claims

• Where filed

Page 8: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

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

Page 9: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Ownership Research• Online at various patent

offices

• Search via company name, inventor names

• http://assignments.uspto.gov/assignments/q?db=pat

Page 10: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Ownership Research

Page 11: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Ownership Research

Page 12: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Technology

Page 13: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

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?

Page 14: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Big vs. small inventions

Page 15: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

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

Page 16: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

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

Page 17: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Technology Research I• Patentability search — Google Patents:

Advanced Search

Page 18: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Technology Research I

Page 19: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

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

Page 20: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Patent Portfolios

Page 21: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

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

Page 22: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

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

Page 23: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

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

Page 24: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Patent Portfolios Research

Page 25: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Patent Portfolios Research

Page 26: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Patent Portfolios Research

Page 27: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

Property

• Patents have value which outlives the company

• Patents have a market

Page 28: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them
Page 29: [webinar] From Ideas to Assets: Common Investor Pitfalls with Intellectual Property and How to Avoid Them

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

Thanks for joining us!


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