0:00 thank you J okay uh thank you everyone thank you again for attending uh this event as part of the eth annual startup poson week conference I am Harish and I'm going to continue to be your host today uh first off a huge thank you to safel University so School of Business again for hosting this conference for the second consecutive year now as you may have noticed this is uh the prime location in downtown Boston as a perfect hub for exploring Boston's Innovation ecosystem and also learning from the industry's leaders the goal behind our startup Boston week is to connect the entire Boston and New England Community across all Industries all startup departments and all bootstrapped and funding stages for 5 days of learning
0:46 and connecting with one another the team that creates startup Boston week is is primarily volunteer and all the folks working the conference here today are volunteering the time as well so thank you for attending this conference it is a labor of life and we appreciate all your participation in shaping up the role for our startup Community uh this session is particularly sponsored by Lando and anastas anastasy LLP uh so thank you very much for sponsoring this session startup Boston week could not happen without the support of awesome Partners like them so thank you so much once again everyone and we'll now move on to the session to the speakers thank you thank you my on sounds good can you hear me okay all right hi everyone good afternoon my name is Andrea
1:34 Reid can everyone oh there we go thank you okay I knew you couldn't hear me um good afternoon my name is Andrea Reid I'm of council with the law firm Lando and anastasi uh we are a Boston based Boutique IP firm so I'll be moderating today's discussion um quick bit about my background um I've been outside Council in uh practicing IP litigation patent litigation trademark litigation for about 15 years now my technical background is in polymer materials and Manufacturing um so anyone who wants to talk about that after I love talking about polymer materials our goal for today is to give all of you um the knowledge and the tools that you need to make good IP decisions for yourselves and for your companies um and also to know when it's
2:22 time to call outside Council to help you along with those as well um I'll introduce the panelists in just a second um some quick housekeeping we're going to Target an hour I'll take questions at the end for like the last five minutes but anyone who has questions in the middle feel free to raise your hands because we want it to be interactive and we want to make sure we're getting your questions too not just what I think are your questions um and also because we have lawyers up here I do have to say nobody is giving legal advice we're not allowed to you all know that all right so our panels today we have uh John spangenberger he's a partner a colleague of mine at Lando and anastasi um Amanda Cardona and associate at Lando and Anastasia as well and Jen Jen just told me how to say her last name I want to say it wrong carnus Caracus Caracus all
3:08 right she is the executive director of the um the suffk law IP Center so we're thrilled to have her with us I'm going to have everyone up here give a 30 second elevator pitch with your own backgrounds because you can describe what you do better than me yeah great uh like um oh sorry like Andrea said a little close there like Andrea said uh my name is John spangenberger I'm a partner in our uh patent division in particular uh my background is in electrical engineering so a lot of my work centralizes on helping companies to obtain patent protection uh for their inventions in the electrical electrical engineering space uh I attended suff University um and now I'm continuing that cycle of uh terrorizing students I'm also an ning Professor here um so I love education I'm very excited to share
3:55 with you all today uh the things I love about IP so thank you all so much for coming great um my name is Amanda Cardona I'm an associate at London Anastasia um my background is in chemical engineering and material science engineering I practice mostly um patent prosecution but I also have experience with licensing transactions and more recently I've been working with our litigation group as well great and I'm Jen carnas I am the executive director of the suffk law IP Center um and I'm also an adj Professor here as well I teach the inroduction to intellectual property course but before that I was a life sciences patent attorney for about 20 years but I wasn't a litigator so I wrote down what I'm going to say and you'll probably see me reading from it and I also am famous for
4:40 saying I'm an immunologist not a technology person so if you ask me a question about software I'm going to smile and Nod and can do the best I can did you say you wrote down everything because you're not a litigator I'm not a litigator I am a litigator and I wrote down everything oh I'm gonna I'm gonna read from it that's what makes me not the litigator I am too it's okay um okay this is great so um always I like to start with an easy question to get everybody warmed up my first question is going to be what is IP and I'm going to start with Jen on this because she told me that if you were to ask all four of us what is IP we'd all give you a different answer so I'm I'm going to let you take that one that's what I always say to everyone it's one of those things I think everyone thinks they know what it is and then when I ask you to like give me a py answer they sort of stumble over the words but what I tend to think of it is it's creative things things of your mind in Inventions Innovations
5:27 maybe not necessarily tangible sometimes it's a product do you have a patent do you have a bone screw or a medical device sometimes it's something you have to think about in theory it's an antibody but you can't see it um but it's anything that comes out of your mind and you want to protect that John and Amanda you guys answer yeah not much to add to that I mean uh IP is an intangible asset right a product of the mine so you could go downstairs to the bookstore and buy a physical copy of a book um and that's a piece of tangible property that you own but the publisher or the author they own the intangible asset of the copyright to make copies of that uh that book right Amanda I think those are both great answers um the only thing that I would add is that it's it's an intangible asset like John said but it covers um a lot of your uh creative
6:15 work what you've been thinking of every time anytime you solve a problem or you make an improvement to something that already exists or anytime you come up with a marketing strategy or marketing materials for your product or service that is all um intellectual property Amanda people generally say there are four different buckets of Ip do you want to briefly cover those so the audience knows where we're heading sure yeah um so there are four types of intellectual property uh they include patents trademarks copyrights and Trade Secrets uh there are differences between these there's some overlap as well um patents generally cover inventions so any uh new and useful Improvement to a um a device a machine a system or a a
7:03 process uh trademarks generally cover um what are like brand identifiers so anytime you use a symbol or a word to identify the source of the goods that is considered a trademark um copyrights protect uh works of authorship so I like to think of it as creative works when you um design a website you make a uh slide deck presentation those are also protectable by copyright or um the more traditional you write a book you compose a song you um perform a play that is recorded all of those are protectable by copyright and then trade secret is a category that covers um any additional information so it it's it's any
7:49 information that is useful by virtue of being a secret to your competitors and this um it's a wide range it it goes from knowhow to system as well um processes but it also might cover uh customer lists in certain instances so it's it's a bucket for any additional information that you can protect that's great thank you and we'll cover all four of those buckets I like that word today while we're up here um so let's talk about the importance of um IP and mo we're mostly going to be focusing on patents and trademarks today but uh the importance of it to the startup ecosystem so some people say I'm I'm so early I'm just thinking about this is IP really something that I need to be worrying about right now or can I just wait until later I don't know John if
8:36 you want to speak to that gladly yeah yeah I mean as young companies right um this is geared towards startups young companies often uh you don't have a lot of capital you don't have a lot of brand recognition uh you don't have an established customer base oftentimes often startups their idea is uh the majority of what the company has right and so of course IP protection is important when IP is the the corner Stone of your business um so to give some examples of where that might be useful um let me ask you a question Andrew let's say I'm trying to get some money from you I want uh you to invest in my company and I say uh you know what patents are kind of expensive I'm not going to pursue patent protection I'm going to put that money towards uh more R&D um so I'm not going to protect my IP so if I come to you Andrea and I say you
9:22 know if anyone comes along any bigger company they can steal my idea and honestly there's not a lot I can do about it because I don't have a patent can I please have a small loan of a million dollars Andrea maybe a tiny loan but not a million dollars because I'm worried fair enough fair enough right and and what happens what happens if you get sued exactly right yeah so if you don't pursue patent protection if you want to talk about short-term benefits uh securing investing that's going to be extremely useful in the short term right so many investors are not going to be interested in exposing themselves to all that risk in your company uh if they know that anyone could come along and steal your invention right uh if you want to talk about longer term benefits um I'll tell you A Tale of a client of ours um two different interactions they had before uh getting involved with us our firm um this client decided you know
10:08 what we're not going to establish a big patent portfolio um we're just going to go ahead and invest all that money in R&D not a terrible idea until another competitor came along and said well gosh this company has no uh patent protection so we're going to sue them for infringing our patents and there's nothing that um our client can do to stop it right so patents have defensive value in that respect right it's kind of like uh amassing your own Arsenal so that you're a less attractive Target for people to sue right like Apple and Samsung they could sue each other on 500 different counts of patent infringement tomorrow if they wanted to the only people who are winning in that case are the lawyers right who are litigating that so you know i' actually scratch everything I just said please uh everyone should Che each other um now that client that was a wakeup call for
10:54 them they experience a you know substantial judgment against them and they there's nothing they could do to stop it because they didn't have any patent prediction later down the road they started getting some patents and eventually were acquired by a much larger company who said well look I I would rather buy this company and buy all of their IP and fold it into our business because um we can't just rip off what they have because they have patent prediction right so um in the longer term it makes you a lot more attractive uh for as an exit opportunity if you want to be acquired um and in the near term it's valuable for securing investing it's a great answer thank you um am I'll I'll throw this one to you um how does a startup know what IP it has and how do they know if it's valuable yeah so um we talked a little
11:40 bit about that before when we were answering the question of what is IP but I think a a a decent shortcut to determining whether you have IP is um when you're thinking about your product or service that you're going to be offering generally a lot of companies will look to what is already available on the market they might um see look at competitive products look at similar uh services and they might try to think about what's an improvement that I might make or what's a differentiator that I can uh Implement that will um differentiate me from what's already available and I say that those are pretty good indicators of your intellectual property that's worthy of protection um in addition to that uh we
12:27 also talked about marketing materials um any visual aids any uh visual information that you're putting out to your potential customers that is also protectable as intellectual property and um I believe you also asked how do how do we know if it's valuable you don't have to answer all my questions it's okay you can answer what you want to answer that's all John does no I I can talk about that at least um with respect to patents because uh patents really you know a lot of companies will um in their investor pitch or for example they'll go up to Shark Tank and they'll be asked do you have patent protection and the um the startup will just say yes we do or a patent pending and they don't provide any more information but there's a lot
13:12 more information that someone needs to know to um be able to decide how valuable and how um how extensive that protection really is and investors will be looking at that information and I think that um when we think about patents we really need to be looking at the claims of a patent because that's where the inventors have laid out the invention in terms of steps or elements of a product and the scope of the claims are going to provide um the protection so you need to think about how easy is it for my competitor to design around my claims because if a competitor can easily change substitute one element for another that's not going to be as strong of a patent as if it's more robust and it covers more elements um you also need
13:59 to think about uh how easy is it for me to tell if my competitor is infringing my patent so some patents cover um processes for example and these might be things that are performed in a manufacturing setting in a laboratory and those are usually um under secured protection uh there might be a situation where you have a patent but there's no way for you to know without uh physically going to their manufacturing site whether or not your competitor is infringing and that's just going to be more difficult to enforce which is going to make it um less robust of a patent than something that when you buy the product on the market you can easily tell whether or not your competitor is infringing thanks Amanda that's great so you know what this is a good time to
14:44 actually switch to patents and start talking um some serious patent law oh that sounded boring it's not boring it's very exciting I'm going to take a poll um how many people in here have an issued patent already how many people in here I got I heard a maybe that's all right my next question was how many people in here have a patent application pending all right we have some more hands for that so let's let's talk about Jen I'm gonna have I'm going in a line here we got John Amanda Jen Jen next question is for you um are there different types of patents what are they how does a startup know which one they need yes and so there's a few things that I always tell my students when I'm in they in class I'm like think you're going to come out of this is you're going to have just enough
15:30 knowledge to be dangerous when you go out and you tell people I have a patent that means it's issued but if you have a penny application don't tell people you have a patent so it's very much like a terminology thing but when we talk about patents there's two main types well there's three I'm going to leave out plant patents if you have a burn burning question about plant patents patents we can talk about afterwards um but typically when we think about patent probably what your comes to mind is a Utility Patent it has a use it has a function it's a thing it's a composition of matter it's a process there's also design patents um which people don't think about sometimes but it that's something that's purely ornamental um it was the day that I figured out it was Apple versus Samsung that my law school friends all figured out what I did for a living when they called me and said how does the corners that are rounded on the apps my iPhone lead to 500 million
16:15 dollar and I was like let's talk about design patent law right because it's not the function of the the apps it's just the decorative nature of it so there are two different buckets but typically when you talk to people and they're talking about patents they're usually thinking about a Utility Patent that's great um and what about provisional and non-provisional applications sure so there are and then there's like and this gets also confusing and people talk about a provisional is like it's a placeholder right it's not going to be examined but it will become publicly available in the future once you if you convert it into a non-provisional non-provisional means this is the one I want you to look at the a patent examiner will pick it up it'll go through a process you go back and forth and we'll go through what that process is but often um I also tell my students in my class suff is really big on Real World Experience so when I it comes out in our class I say in the form of this is why scientists and Technology people
17:01 hate the patent people or this is why marketing hates the patent people but when we talk about if you think you have an idea like we're talking about these like how is it valuable the hard part is don't talk about it right you want to make sure that you've protected it you one way to lose patent rights is to talk about it and we'll go through that in more detail but a provisional is a good way to sort of you know you set your stake in the ground you're saying this is what I think my invention is right now it never gets and then 12 months you can add more data you can add more information you can change the claims but at least it gives you some protection so I used to say to all my clients before you go to that you know um meeting I often joke my mother raised me to paranoid neurotic so being a lawyer was a fantastic career for me before you go to a meeting they'd be like Jen it's going to be fine and then I literally had one client who they went to a meeting on Friday and they realized that Monday that the people had stolen their idea and had filed their own
17:47 provisional patent application but we had filed on Thursday before the meeting and they said thank God we did that I said see I'm annoying but there's a reason why I'm annoying we're no we're not annoying and nobody hates us no I'm talking about me not in general me so John I'll ask you um when it comes to provisional applications and non-provisional applications thinking of the the audience here being startups um how would you think about the appropriateness of each of those different types of applications for them yeah yeah so um provisional applications are often a lot more valuable for startups um because first of all provisional applications like Jen said they're more of a placeholder uh they have less exacting requirements that means that they're a lot cheaper right so uh we attorneys don't have to spend as much time preparing a provisional application because they don't need to be quite as robust as a non-provisional
18:33 application so for startups you know when money is tight in the early stages of a company's development often the provisional makes a lot more sense from a cost perspective um the other great benefit of a provisional application is that you can change whatever you want uh over the course of the uh year after you file the provisional application right and so that's great because early in the um early stages of your product development you might have a product that looks one way uh one day and then you know a month later you've decided you know what uh we're going to change up all of these critical features of the product and completely changes the scope of what your product looks like so provisional applications are great because you can be a lot more agile in um changing the scope of the content of the provisional application whereas with non-pr provisionals once you file it you're basically locked into what you've
19:19 described in that document thanks that's a great answer um all right next question Amanda I'm going to give this one to you so how does a startup know if they're idea is patentable there's a question I'm sorry I'll take your question or one of them will take your question yeah she's bringing you a microphone thank you very much very quick question just to come back on your point about the provisional patent IP so I'm just wondering do do we need a work in a biotech field with biologic you may be familiar with so how much data do we need to actually file a provisional patent do you really need like concrete data or if you have an idea for example that combines two already existing
20:04 things but from a different different angle sorry can you just based on the description of your thought have this Pro um provisional Patent filed or do you need additional data and things to to start writing in because I I may need to think about quickly yeah there a wonderful question um so it is more like the broader idea of what The Invention is rather than getting down to specific uh data figures numbers in fact it's often not advantageous to put things like very specific data in a provisional patent application U something to keep in mind with patents is that it's a quit pro quo you know you're you're uh in exchange for potentially having a monopoly on your invention by virtue of the patent um being granted to you you
20:50 are describing how your invention Works in its entirety to the public so once your patent has expired you have no more protection and everything everything that you disclosed is complete public information so often times we actually want to be judicious about what we're putting in an application um because knowing that it will eventually become public so oftentimes it's not a good thing to include very specific uh data and numbers because you're uh sharing a little bit more than you would otherwise have to so that's a long-winded response to your question um which is you only need a more General description of an idea thank you very much I'd like to add just um quickly for for Life Sciences it's it's a pretty complicated field and there tends to be a higher requirement for data than other like for example
21:36 consumer products um so for the provisional application it's not required but you you probably do want to consider whether you're going to have enough data within the year period so that when you convert the application you do have data at least to enable your claims thank you very much and just to follow up on that and I'm done with this and I'm sure maybe other people might may be benefiting from that so uh I'm applying for Grant from us right and one of the caveat is they don't provide any CDA so basically they don't have any way for you to secure whatever you're going to disclose with them and if you don't disclose your invention or maybe your vision right they won't invest in you so my question is do you think then the provisional application is a must have before even to discuss with them because
22:22 the way I was communicating with them is that they said that it should be confidential because this is not the aim of the organization to share those information but they have reviewers and those reviewers are supposed to be confidential but they are humans and they can show some leaks sometimes so I'm just wondering more globally for anyone here in the room looking for Grants from the US right NSF or others if there's no CDA if you think maybe the provisional application is a a must have we generally recommend if it's possible to file the provisional application before um applying for the grant but it's not always possible it's best practice it's answer we have another question over here if you want to oh okay wait hang on
23:10 we have a line next question so um when when to apply for a provisional uh patent and what is the so is the jurisdiction of both the patents the same so if if someone in infringes on a provisional patent can we sue them as they would have done as would have done if they did if they infringe it infringed on a non-provisional patent great question so critically when we talk about um patent applications that is different from a granted patent so when we talk about provisional patent applications a provisional patent application will never become a patent um unless you file a non-provisional patent application and if that is then granted to a granted patent that is what you can use to sue alleged infringers a
23:56 patent application gives you absolutely no right whatsoever to sue anybody um because it's just an application right so I think there's a misconception sometimes that acquiring a patent is a purely administrative action that you submit an application and the P US patent office says yep you check the boxes rubber stamp uh in reality it's a substantive back and forth process where we uh negotiate with the patent office what the scope of that patent should be so only once it's granted and all parties us and the patent office are in agreement Yep this should be granted this is novel and you deserve a patent only then can you take that and sue somebody so to answer your question a provisional patent application is uh mutually exclusive with a granted patent and only a granted patent can be used to sue somebody does that make sense yeah
24:43 thank you so much perfect my pleasure over here on the my left hello my name is Rashid thank you for such an interesting topic um I'm working software and I believe the question I have is concerning a lot of people from the same industry so let's say I'm developing an application software and uh I believe it's kind of unique MH at least at some points so what is the what is patentable in terms of um General software application is like the design itself is it set of features or I mean like definitely the code is under falls under copyright but
25:28 what can be patentable if I'm just making a software thank you great question and for a few hundred dollars an hour I can tell you it depends um this is the the the million-dollar question right in uh patent law right now with the patentability of software um to be frank with you it's a very heady and Technical explanation that I think is better suited for a one-on-one conversation it would take me 10 minutes to give you a very muddy explanation of where the state-of-the-art is uh in in the world of software patent law right now the short answer is that it is possible to get patents on software inventions but it is difficult and uh only certain software patent applications can or uh Technologies can be patented um you also mentioned copyright you it is very easy on the other hand to get copyright protection
26:14 for the literal code of your software but if you want to cover the uh higher level functionality of what software is doing that would be the domain of patent law and that's where it gets complicated would either of you like to expand on that at all no I think that's a great answer all right we have another one please yeah so can you comment on excuse me a thought or statement that hey a patent is only good as your ability to have the money that it's going to take to defend that patent particularly when you're going against a bigger company yeah I this is a question we get a lot right um in response to that I would say that patents are a known cost uh to give you some level of protection against companies uh it's absolutely true that it is very expensive to defend against
27:01 um a competitor who is ripping off your idea that you might want to sue for patent infringement um but what's the alternative right uh that you have no protection whatsoever and they can trample all over you and do whatever they want um I am uh young and optimistic about the US legal system still uh so I am I I do have faith that it um provides for protections um in events like that where it's a large competitor infringing on a patent um so there are things available to you like if they're blatantly ripping off your invention and they know it and they're saying well yeah but we have more money so what are you going to do about it um there are extra remedies available to you in the way of things like triple damages um or attorney's fees so um yes it is expensive to defend yourself against a case of patent infringement um
27:48 but you'd be in a worse position if you had no protection whatsoever right so the second part of that would be if you don't pursue a patent are there things you can do in the way you operate and in the way you go to market which could provide some kind of relief against uh somebody infringing well um I suppose you could pursue trade secret protection instead for some of your inventions um which by the way it's software yeah okay yeah yeah so trade secret and patents often you have to decide between one or the other um but they offer much different scopes of protection so with trade secrets for example if a competitor is able to reverse engineer something that you are alleging as a trade secret that's fair game you don't have trade secret protection for things that are fairly reverse engineered so I would say
28:35 your your options would be limited um in the software space if you don't have any patent protection um and yes you might have some large competitors who can uh use their Capital to um you know pursue a potentially frivolous claim um but having a patent in your back pocket offers a lot of value in terms of deterring them from doing that and potentially even an exit in the way of them wanting to acquire your company I'm sorry last thing so what what in general this might not be a fair question does it cost to obtain a patent and how long does it take for software yeah great question and U something we wanted to talk about yeah uh very ballpark uh depends on the technology but maybe around $30,000 start to finish um how long does it take about three years on
29:20 average yeah so I I was actually I don't know if the moderator is allowed to answer a question but part when you first started I I have a practical comment on whether there's enough money to defend yourself in a patent litigation if fre suit or if you want to assert your patent someday um just from a practical perspective it takes a while to get a patent and by the time you go from startup to having gone through a provisional to a non-provisional to an issued patent through the prosecution timeline um many years could have passed at that point and you might be in a very different position at at that point or maybe you've been acquired at that point and the cost of Defending or asserting um uh in patent litigation is it's it's someone else's problem so I wouldn't I wouldn't let the thought that oh my goodness I've heard patent litigation is so expensive be a reason to not pursue
30:06 protection if you if you can get it so you're welcome um so Amanda I was going to ask you about uh the requirements for patentability So utility um novelty non-obviousness just so that we have a sense of what actually is patentable yeah um uh like Andrea was mentioned there are several requirements uh the invention has to be new uh which is uh it has to be novel it can't have been described in a publication or on sale it also uh has to be nonobvious which means that um someone who has what we call ordinary skill in thee art can't look at something that exists and think that your invention is just an obvious modification of it um that's a very
30:52 simplistic answer that the bulk of what we do as patent prosecutors is argue that an invention was not obvious but that is something that usually the examiners will try to come back with um in addition to that um it has to be described in the text of the patent application in sufficient detail to enable someone to make and use the invention and that's also kind of a nuanced requirement because as you know we were talking about Trade Secrets and there are certain Elements which you can still keep as a trade secret so finding that balance between enough disclosure and um maintaining conf confidential information is an art as well and then um the last requirement is that it has to be um The Invention has to be part of
31:38 one of it cannot be part of one of these categories that uh the Supreme Court has deemed are not eligible for patentability at least under us law and they include um algorithms like software generally as well as uh naturally occurring products um is another category and again like we were just talking about software that's also a Nuance answer but that's the short version thanks Amanda can you recommend any um searching resources for startups who might want to get a sense of what's out there what have other people patented what do I have to worry about because I don't want to infringe on anyone's rights is that something that they can start on their own yeah definitely um there are a lot of different search platforms you know the
32:23 US patent and trademark office has one European patent office that um world intellectual property office also has one my personal favorite though is actually Google patents because it's a very uh simple search bar like we're all used to using Google for our search bars and it also provides machine translations of international applications and there's also an option uh to review non-patent literature which is like scientific Publications articles that may also be relevant to the technology um I want to know are there any types of documents that startups should start collecting now if they think at one point they're going to file a provisional or non-provisional anyone can take that um sure we often see um people
33:12 prepare what's called an invention disclosure form and that's generally some uh answers to very basic questions you know what's the invention what was known and it also includes information on who the inventors were so when you're thinking about uh I think we're going to get into this in more detail in a little bit later but um when you're thinking about what your claimed invention is going to be anyone who made a contribution to the claimed invention is an inventor and those uh individuals are going to have an important role during prosecution um by transferring ownership for example to the company so it's important to be able to identify who the inventors are from the beginning other than that um just a description of how to make and use the invention is
33:57 sufficient that's great thanks and then what about um deadlines are there any John you you can probably answer this one are there any deadlines or Tim lines that U should be top of mind yeah and they come sooner than you might expect um bottom line high level summary you need to have a patent application filed before any kind of disclosure any kind of public disclosure um so if even a an offer for example to sell your product to another company privately behind closed doors that would uh trigger the bar before which you would have had to file a provisional application or a non-provisional application um so before ever telling anyone about your idea except in um within your own company uh you should be filing a patent application before that time thanks Amanda do you want to talk about the
34:43 timeline for prosecution I know John you gave a rough idea of how long it takes but what specifically should should they expect in terms of filing until actually getting their their patent yeah I think um John mentioned three years that the patent office has a goal of issuing a patent within 3 years from the filing date of the non-provisional application but there are ways to um delay or speed it up based on your needs and uh also the three years is kind of a a pretty um it's a goal it doesn't doesn't always happen it depends on the way the prosecution is going it may take much longer but um if you think about filing for super provisional application you can count one year from that date um
35:29 after that you can file a non-provisional or an international application if you uh want to delay prosecution further you can file the international application and then you have another 18 months to file your non-provisional application so at this point we are two and a half years in um and then is when their three-year uh Target begins so there there's a pretty straightforward way to delay prosecution as much as possible while you try to to uh get funding on the other hand if your goal is to have an issued patent very quickly you can file the non-provisional application uh from the beginning and you there are ways to expedite prosecution you can file what's called a track one application and uh I believe
36:15 within about two years they try to get those issued right yeah so it depends so do we do we want to move from patents to trademarks do we want to keep talking about patents I want to I want to talk about what the audience wants to hear about I have two questions yeah we'll we'll start here yeah thank you I'm still trying to find a way I believe like a lot of people here work in software too so it might be interesting for not only for me so let's imagine I still want to protect uh my software with a patent uh from what I heard it's kind of like tough to do it with Utility Patent so I'm wondering how about design patent can I file and use
37:04 design patent to protect my user interface MH which I mean like at some point uh it will become uh very polished and usable and now I don't want uh my competitors to take advantage of just like cing my UI and just doing the same thing which is easy to do so I'm wondering uh is it possible uh to use design patent to protect user interface of the software thank you yep you sure can and uh you could also pursue copyright protection um for it as well so yes absolutely you can and that's much cheaper than a Utility Patent and can you please give the numbers and timeline for design as you mentioned patent is like $30,000 how much will be for design patent do ither you want to
37:51 take that one no it's much less than a utility P that that's uh the short answer um it you know if you're able to provide the images in the drawings that are going to be used in the application you can also greatly reduce the cost of filing because a design patent application is primarily the drawings and there's a very short description um attached to it and I believe that prosecution tends to be quicker for design applications than uh than utility applications yeah it tends to be a lot more straightforward with Utility Patent usually there's a back and forth with the patent office for about a year and a half uh maybe say three back and forths on average but it can go theoretically indefinitely with design patents usually
38:38 it's at most one back and forth um it's a lot more straightforward to get those granted so but otherwise I think Amanda answered it perfectly okay we had another question oh gosh we have lots of question one two three four anyone anyone anyone who has the mic can ask the question I'm going to go first I'm going to tail into this guy's question question so when someone comes along and rips off his UI right I know gentleman down there was asking about costs you read about this stuff online and they provide wild ranges right you know 600,000 to three and a half million what's it going to cost him to go defend that that patent whether it's design utility inact and I know everyone looking for numbers range and then when you read about these things online is that borne by both parties or is who who
39:25 actually foots the bill for this good question so who foots the bill uh the general rule is that everyone pays their own attorney's costs okay uh even if you win the case that doesn't mean that the other side has to pay your attorney's costs as a general rule unless there's especially flagrant circumstances which Andrea I'm sure could speak to you better than I as a career litigator um in terms of what it would cost unfortunately it runs the gamut yeah I mean well it could be as simple as sending them a cease and assist letter so you know you have an attorney spend $1,000 writing up a letter and sending it to them sure y yeah um and then litigation I mean Andrea you could probably give better figures than I on the upper end my my figures are pretty much what you just cited and it could be lower and it could be
40:11 higher no no no nope every oh that would be your own one one party yes and but it it depends on so many things right it it it depends how is this is this is this a competitor you really care about how much are they going to fight if they just roll over over and and say fine forget it it's not worth it you know we don't have the money right now to pursue this ourselves then that's not going to cost you as much if it's someone who who's really going to fight until trial and take it to appeal I mean that's going to cost you a lot more so also the um the the complexity of the claims uh the number of patents involved like when we're when we're quoting out what a litigation might cost after a client gets sued and comes to us and says what are we looking at here we say how many patents are asserted we look at the claims and say is this really really complicated um can we resolve this in
40:59 court or can we go to the patent office have the patent office take a second look at it um if it's if it's our client's own patent um then you know we we of course don't want to go back to the patent office and have them take a second look at it but that's often what defendants are going to do so it's a it's a long way of saying that a lot of the cost is driven by how serious your competitor wants to fight so unfortunately that's out of your control but yes um I relate to the software question that getting asked so what does mean in terms of data here because in his case I relate to him quite a bit design code is not data then what is data and especially from a defensive perspective in the sense not a litigation perspective but many investors come and ask this question do
41:44 you have a patent and we say patent pending MH uh what does that mean data perspective what is the data can be explained to as something that we can future defend it mhm good question so when if I understand your question properly you know what would we want to put in a patent application whereas what would we not and the what would we not includes very specific data and I understand your question me what is that data so for example let's say you have an algorithm that takes in these three different inputs and it weights them all differently to come up with some output right what I just described is what we might want to put in the patent application so we say look we take these three inputs we assign some weight values to them and then we come up with some output based on that so that's what we put in the patent application what we wouldn't necessarily put is here's the
42:30 specific numbers that we would use for those weights um you know that sort of uh data that gets down to the very fine granular level of the algorithm that we would want to keep out um now big surprise I the patent attorney I'm going to say consult with the patent attorney as to uh what constitutes that data you'd want to keep out and what is the higher level idea that want you would want to be the subject of the application so you know we have day-to-day experience of dealing with patent office and understanding what level of detail they'll require versus the level of detail that's really hurting your Yourself by including that answer your question perfect I have a question about visual artists and um I mean I I'm confused
43:15 about whether it's going to be trademark copyright patent and and now you have digital uh visual artists so could you talk about this yeah gladly what want to move to trademarks and copyright I just think we have people online too who I know we promis trademarks and copyrights so let we we should move to that um I want I promised Jen she could have some of this so and and you haven't been talking enough so I'm going to shift some questions to you tell us about trademarks what what are they when are they appropriate so trademarks again I always tell my students if you are looking for a bright line rule IP is not really the area that has bright line rule and um but in terms of trademarks there's sort of these mantras and I always tell them it's it has to be a
44:02 source identifier and it has to distinguish your goods from other Goods in the marketplace so even if you don't know what the source is as long as you know it's different so I my perfect example of that is like marshmallow peeps you may not know that it comes from a Just Born company but you know that Peeps are different than whatever a peep competitor is or things like that um but it a trademark could be a word a symbol a combination it could be there trademarks for sounds there are trademarks for smell like Play-Doh and the mean that I said that you all just pictured or you know imagine the smell of there are um uh colors can be trademarked so the original canary yellow of the 3M Post-it different things um the red soulle of a Louis Bon Sho those are trademarks um but trademarks you have to be able to prove
44:48 that in the marketplace it has that distinguishing characteristic that the consumers in that channel of goods understand it to be a particular brand and it's different from other brands in the marketplace that's a great answer and then what about copyrights so again I have all these monra so the monra for copyright is it's an original work of authorship in a fixed tangible medium but one of the things that IP people love to do is not use the dictionary definition of words so when I talk about tangible like tangible inition is more about like tactile right the ability to perceive by touch but it just means in the copyright sense that you can take it and you know show it to somebody else at a later time whether that's a second later a nanc later 10 years later that's what we mean by fixed tangible medium so it could be you know when when I talk to
45:33 my students and they're all much younger than me I say oh you know I grew up with first it was vinyl records then it was you know uh cassette tapes and then it was CDs and now it's like everything's in MP3 MP3 file right so we have things that were tactile right I I had my CD I scratched it I was in trouble you know I lost I couldn't F the song now it's all in the cloud again software so I'm going to use like big words but um you know it's so it's this idea that even if you're a visual artist it's typically that's when we think of you know copyright we think of things like movies books poems um my favorite is there's also protection for pantomimes and choreography so apparently the Marcel marel Lobby was huge when that got added into the copyright statue but for you know for you all in business it could be you know your website your materials your slide decks things along those lines those are also things that are
46:18 works of art works of authorship in a um fixed tangible medium John Amanda do you want to one do you want to add to either of those the trademark or the copyright um I I think that was a great answer and just to summarize a trademark identifies a product that's in the marketplace and a copyright covers any other creative work yeah and I'll just add that to your question copyright would be the primary form of protection for visual artists um do we have other questions from the audience on trademarks or copyrights I want to make sure we're answering what's on your mind on here can something general ated by AI be copyrighted not in the US so thanks to a case that involved monkey selfies yes
47:04 monkey selfies the current rule in the US is that you have to have a human author so that of course this is like forcing the copyright office to think about modernizing our our laws and thinking about how to do things so they're right now they're soliciting comments on AI and copyright but they have there's a few cases where if you have a whole work so the one case they had was a a graphic novel where the the humans wrote the text and they had the AI images so the copyright office said you can protect the whole work but you can't get a copyright on the individual images because those were not generated by a human author and if anybody wants to know about the monkey selfie I'm happy to tell you all about that story stay after for more on that yeah um question in the back to follow up on that um what do you define as an art
47:50 generated by human author so you can take a monkey selfie for instance and change a few pixels that might not even be visible to the human eye and does it constitute as a work by a human author it has to be how much how different is it right you have enough the law of copyright is that is you you have to be original and creative is it just enough to make that spark of creativity but then um in terms of you I I I'm not familiar with the case life I haven't practiced in a few years so if there's anybody feel fear to jump in but in terms of that if you're making sort of insubstantial changes um but there are some and this has also been um the Supreme Court has recently come out with cases like in the Andy Warhol case um it's changed the nature used to be this idea of transformative art so there were artists like Andy Warhol who would take
48:35 people's pictures and make that pop art right and they would change it and it used to be sort of the general rule was that was fine right you're you are making your own creation um now there's sort of an added layer of are you doing it for a commercial purpose when you're doing that so I have a lot of friends that are you know I'm a huge nerd I'm a I'm a scientist who became a lawyer I'm a nerd big surprise so all my friends are nerds and they want to do like fan art and fanfiction and I'm like that's great then they want to sell it on Etsy and I was like now you're moving beyond the r of like I'm like there's a risk and so and and things like that but I can talk more about that later afterwards if you want to any other questions on trademarks or copyrights we have hi I have just quick one when you're thinking about consumer goods is it worthwhile aside from the brand itself to trademark the actual
49:22 formulation of the product or like how would you think about that when you say formulation are you talking about a consumer good like maybe uh makeup product exactly like a yeah like skincare makeup whatever like yeah great question so um you would not trademark that but you would potentially pursue uh patent protection for it so you could uh pursue a patent for the actual composition of matter it's called of the product more likely you would use uh trade secret protection um and so you would not disclose what your exact formula is you would keep it secret keep it a trade secret in fact um and then as long as it can't be verse engineered you can indefinitely have that um that makeup uh protected yeah exactly right so Trade
50:09 Secrets cover um things of commercial value which you are keeping private so you may have seen the big weo versus Uber uh trade secret case um in which an engineer from wh went to Uber and he took all of his uh this confidential information from wh and used it to improve Uber's products um so that's trade secret misappropriation that resulted in a $250 million judgment so trade secrets are very powerful um they're also the only form of Ip that have criminal liability so I think that engineer also went to jail for a year and a half um so trade secret protection is very useful um the caveat is that if competitors fairly reverse engineer your product that's fair game whereas with patents doesn't matter how a competitor comes across your idea or if they
50:55 reverse engineered or not if if you have a patent you can block anyone from practicing your invention regardless of whether they copied you or came up with it on their own John what are some of the best practices for helping keep your trade secret private yeah good question so you need to take reasonable steps to keep your Trade Secrets secret okay um so for startups this is especially concerning right like if you work in a co-working space uh you need to be careful in terms of just phys physical security that you're keeping any of your documents locked up I literally locked up up right um You might want to be wary of what you're showing on your screen when others are around um but one of the most powerful tools that you can take advantage of are things like employment agreements and non-disclosure agreements so you need to be careful when you're hiring folks that you have an employment
51:41 agreement that explains you know here is what information is confidential you need to be very careful not to disclose this confidential information to anyone um and then in terms of things like non-disclosure agreements with uh say A supplier a partner that you might want to work on or work with um as part of that business relationship with someone you're Contracting with you're going to need to disclose some confidential information probably and so you need to set the expectation with them this needs to remain confidential you can't share this with anyone right um so all that to say you need to take reasonable steps to keep your trade secret secret um or else if you don't take those reasonable steps then it can become public and there's nothing you can do to stop anyone from um using that trade secret that's a great answer do we have I think we have
52:27 one more question oh two more questions so uh once I file a patent and then I I'm writing a white paper or creating a deck of slides or creating an image to explain that algorithm so do I need to file for a copyright as well as the patent or just the one uh they're totally separate from one another um so yes you would definitely want to file a patent application before disclosing anything in the form of a white paper or slides okay um but once you disclose that white paper slides after you filed your patent application you could 100% pursue copyright protection for those um but it's not as though it's it's there's any dependency on the patent application per se they're totally different tracks of protection there's no requirement to register the copyright exists as of the
53:12 date of creation if you uh want to add the copyright symbol that just helps put others on notice but you already have the copyright prior to registration mhm yeah and to add on that I mean is talking about the C in the circle that means this is a copyright as compared to the r in the circle that means this is a registered copyright so it's kind of a step above um and for that you do need to go through a registration process okay so is it what is the difference between the two provisional and non-provisional kind of um I would I would divorce them just to not confuse the tracks um with copyright anytime you create any work of authorship that automatically has copyright protection so you could theoretically put a c on every single PowerPoint you've ever made every word document you've ever made um
53:58 where so you don't have to do anything to acquire that protection but if you go to the patent office and you register it with the patent office which is quick cheap easy then you can use the r symbol okay so as an example I have copyright in this outline that I've been reading from and writing on I'm not I have it it automatically exists I'm not going to go register it because nobody cares just want to add one thing just to be clear that your copyright is when you have the moment of fixation it's not just when you have an idea it's when you put in that fixed tangible medium and then um and there's different terms so the reason why I patent is you know we say about 20 years from your first examining application but a copyright if you're a company and you do it in a work for higher it could be 95 years or 120 years a person it's the life of the author plus 70 years so it's a long term
54:46 um and there are some benefits for the um you can use the C with the circle and that's actually for both the registered and the um any copyright even if it hasn't been registered with the copyright office so it used to be you would put something in a sealed envelope and mail it to yourself is that still good oh it's to show like what the date was yeah like in terms of like you have as a like you could have proof that you would do that now it's you know you can keep a notebook you can date your journals you know it's and things like that it's no longer and there used to be formality requirements and then like a lot of people lost their copyrights because they didn't put the c on it including like tolken and Picasso and then when we entered the trip agreement they all got it back so we had to play nice with everybody and they got their their rights back we have one more question in the front that's been waiting thank you all thank you uh just
55:32 to go back to the geni question uh just to be clear if I take something an image I put it on a t-shirt I start selling the T-shirt then I don't have any covered someone else can take that same image put it on a poster or t-shirt is that correct so you created I'm sorry you created the image or you asked chat GPT or whatever the dolly or whatever it's called that you asked them to create it for you uh well a little more specific I uploaded a bunch of images I had it created based on those images and so there's fair amount of prompting on my part of what I wanted it to Output it did the output and then basically it's an image I want to sell that on on could you transform the image a little bit and make it like you know could you add to it could you incorporate into another design if it's just purely what comes out of the generative AI right now in
56:17 the United States it's not considered protectable by copyright and so if I printed out like a black and white version and then I colored it myself or something like that here's my favorite lawyer answer of it depends right so as I tell my students right it really is a matter of like you could have it's what the you know it's ultimately what a judge or jury decides if you've ever had jury duty you know that could be a scary process but I'll leave that to the so you know it's there's no bright line rule like if you make these number of changes you're going to be fine in some jurisdictions they might say that's fine other jurisdictions you might say and then they go to the Supreme Court and they wreak havoc and everything we thought for 10 years is now out the window and and then sort of an additional part is there anything right now that I have to disclose if I used AI to create something I think that um we as attorneys have an ethical requirement to
57:03 make inquiries as to whether uh you used AI to um produce whatever your creative works are um because for example with the copyright office uh if AI was used to create something it's not subject to copyright protection and so it would be a violation of my ethical duties to file that on your behalf with the copyright office if I didn't make reasonable inquiries as to whether you used generative AI to create it okay so so no there's no box you check that says I didn't use generative AI but um when you're filing you're making uh you know an assertion that no I did not actually use AI this is an original work of my authorship okay so even if I just put like a a c on there or something that's doesn't really count correct because it's uh anything created by uh AI is not created by a human and therefore it's
57:49 not subject to copyright protection it'd be like I don't know making this up if um you're walking along the beach and you find some Driftwood that's been shaped by the ocean uh just because you pick it up I don't know this is how my mind works um just because you found it you picked it up it wasn't created by a human it's not like anyone can get copyright protection for that piece of Driftwood right because uh it was created by the ocean not by you so I'm getting the hurry up and finish signal over here and he's talking about Driftwood so we're gonna stop it here um so just I I I I was going to recap but we covered so much today um you can go to the Us pto's website they have great searching resources Google Pat another great searching resource um and then the the last resource I want to mention is um on Lando and Anastasia's website we have um an an entrepreneurship center with all
58:36 sorts of common q&as that we get all the time we put it all up there online go and check it out and hopefully if there was anything today you didn't get answered you can you can find it there so uh thank you everyone for for listening thank you to the panelists thank you to Startup Boston for having us um I hope that that was uh helpful and enjoyable thank you all thank you
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