Category Archives: Patents

Types of Intellectual Property that Entrepreneurs Should Know

Justin Sanders Explains the Different Forms of Intellectual Property

Justin Sanders Explains the Different Forms of Intellectual Property

Justin Sanders, the VP for High Tech and Mechanical Devices at Entralta, gave a very insightful presentation on intellectual property last night for the Center for Entrepreneurship and CSUF Startup Incubator at the CSUF Irvine campus. He covered a lot in his hour long seminar so I’m simply going to give you an overview of his talk here and, hopefully, in the future we will publish key segments from his talk as part of our Knowledge @ CSUF Entrepreneurship series.

What are the types of intellectual property?

  • Patents

    • Patents are a “set of exclusive rights in an invention granted for a limited period of time… [and it gives the patent owner the] right to exclude/prevent others from making, using, selling, or importing infringing goods/services.”
    • There are different kinds of patents, including:
      • Utility Patents

        • “Protect structural/functional features of an invention (i.e., the way an invention works).”
      • Design Patents

        • “Protect non-functional, ornamental features of an invention (i.e., the way an invention looks).”
      • Plant Patents

        • “Protect the invention – or discovery and asexual reproduction – of a distinct, new plant other than a tuber or a plant found in the wild. Means of asexual reproduction include cuttings, layering, budding, and grafting but do not include growth from a seed.”
  • Trademarks

    • “Non-functional, distinctive source identifiers used in connection with sale and offer for sale of goods and/or services. [Examples include:] brand names, company names, logos, tag-lines, jingles, product packaging, product shape, product color, store appearance/decor, etc.”
  • Copyrights

    • “Legal right of ownership that arises automatically when an original work of creative authorship is fixed in any tangible medium of expression from which the work can be perceived, reproduced or otherwise communicated, either directly or with the aid of a device. Work must be independently created and possess minimal degree of creativity. Work cannot be functional (e.g., undulating Ribbon bicycle rack).”
  • Trade Secrets

    • “Any information that derives independent economic value (actual or potential) from not being generally known to others, so long as reasonable measures (under the circumstances) are taken to maintain secrecy of information; e.g., Coca Cola recipe.”

Justin obviously went in to greater depth on each of these (except for the plant one, either he’s not a fan of plants or it’s just an area of IP law that he doesn’t cover all that frequently; it’s probably the latter) during the talk and I do hope that we will be able to get important segments of this talk published soon. Make sure to keep updated on all events and knowledge that comes out of our program by becoming a CSUF Entrepreneurship Insider.

Until then, here is Justin’s PowerPoint presentation:


#CSUF

For more details on CSUF Entrepreneurship:
http://business.fullerton.edu/Center/Entrepreneurship/

For more details on how we help people become entrepreneurs:
http://business.fullerton.edu/Center/Entrepreneurship/Incubator

For more details on how CSUF Consulting can help businesses thrive:
http://business.fullerton.edu/Center/Entrepreneurship/Consulting

Attend one of our events for entrepreneurs or sign up for a free mentoring session:
http://bit.ly/CSUFEntrepreneurEvents

Knowledge @ CSUF Entrepreneurship video series:
http://bit.ly/csufknowledge

The Patent Process

Austin Bonderer Patent Attorney

Patent Attorney Austin Bonderer

On July 12, the CSUF Startup Incubator had a guest speaker to discuss the topic of patents. Austin Bonderer, a patent lawyer, visited the Incubator in order to present potential patent landmines that small businesses and startups should be aware of. He specifically addressed an answer to the question “What happens after you have your idea and how do you protect it.”

Before the event, I was able to briefly speak with Austin about his talk and himself. Austin received a degree from the University of Virginia and graduated with a degree in Civil Engineering. Austin has been working in and around patents since 1998. He started his career in patents as the University of Virginia Patent Foundation (now called UVA Licensing and Venture Group). While working toward his law degree, Austin worked for 5 ½ years as a patent examiner at the United States Patent and Trademark office. During this time, his work concentrated on valves, business methods, and medical devices. After his time there, he was a clerk for the Board of Patent of Appeals. From there he became the Head U.S. patent prosecutor for FoxConn Technology Group as a patent lawyer. With all that experience under his belt, he opened up his own firm.

As a patent attorney, Austin always cautions his clients on not moving too fast and to make it a point to go through proper channels to get a patent. Austin started his presentation with a list of pros and cons of why a business should invest in a patent license.  A patent is an “asset to increase the value of your business” said Austin. He went on to describe the process of obtaining a patent, warning the attendees that the average amount of time to acquire a license is 2 years.

The first phase is the search for prior art, this is where a business would conduct a search to see if their product has already been patented by someone else. This stage is optional as the patent office will conduct their own search; however, Austin advises to do it as he explains that the patent office search is not the “end all-be all” and patent examiners only have so much time to search for a certain patent. There are several times for when you should, as a business, conduct a prior art search, this would be at conception, when your first product is made and once more during launch.

“A patent is a negative right, not a positive privilege” said Austin. This refers to the right to keep someone else from making your product.

The second part of the patent process is the Application Writing phase. In its simplest form, this phase is filling out the application for a patent and then paying for it. This is the costliest part of the process, not because of the patent itself but because of attorney fees in order to get the application. A patent application can cost $5,000 or much more.

The last phase of obtaining a patent is the prosecution phase. This phase is turning in the application and (hopefully) getting approved.

Austin continued by presenting a list of “landmines” that companies might face when creating their invention and the following stages. These possible barriers included the invention itself, any employees, inventor and outside parties. He gave tips and directions on how to close these loopholes.

Do you have intellectual property that needs protecting? Get in touch with Austin by going to his website for more details on how he can help you protect the most important assets your business owns.

But a patent is only a part of the process of going from your concept to launch. To access expert coaching on how to start your business and gain access to many other professionals like Austin you should join the CSUF Startup Incubator as our next Resident entrepreneur. Working with the CSUF Startup Incubator is not free but it should be seen as an investment in your business with the ROI being launching your business sooner and having a clear startup road map for your business. Please contact us at csufentrepreneurship@fullerton.edu for more information on how to become the next entrepreneur to work with us at the CSUF Startup Incubator.


#CSUF

For more details on CSUF Entrepreneurship:
http://business.fullerton.edu/Center/Entrepreneurship/

For more details on how we help people become entrepreneurs:
http://business.fullerton.edu/Center/Entrepreneurship/Incubator

For more details on how CSUFConsulting can help businesses thrive:
http://business.fullerton.edu/Center/Entrepreneurship/Consulting

Attend one of our events for entrepreneurs or sign up for a free mentoring session:
http://bit.ly/CSUFEntrepreneurEvents

Knowledge @ CSUF Entrepreneurship video series:
http://bit.ly/csufknowledge

Patent Landmines for Entrepreneurs and Startups @ CSUF Startup Incubator

Austin Bonderer Patent Attorney

Patent Attorney Austin Bonderer will be giving a talk at the CSUF Startup Incubator (Placentia) on Wednesday. If you have any questions about your intellectual property then you should definitely attend this seminar.

On Wednesday, July 12 at 6pm at the CSUF Startup Incubator (Placentia) we will be hosting a can’t miss seminar by Patent Attorney Austin Bonderer. If you have any questions about your intellectual property then you owe it to yourself to attend. Please register by going to the event page.

Your intellectual property is what sets you apart from your competitors and it gives you a strategic advantage in the marketplace. So it makes sense that you should take all appropriate measures to protect it because, if you don’t, the repercussions could be catastrophic for your business.

But you also need to talk about your ideas with potential investors, partners, customers, and your employees as well. What should you do?

There is no simple answer because there are too many scenarios requiring different IP protection strategies. That is why we are happy to have patent attorney Austin Bonderer talk about the right strategies you should be using when discussing your ideas, your intellectual property, with outsiders.

Pizza and soft drinks will be served at this event.

We hope to see you there!

[Parking for this event is free. Please park on Bradford Avenue and go through the front gate, this event will be located in the back of the building.]

Austin Bonderer started his career in the patent system while studying engineering at the University of Virginia. Upon graduation, he accepted a position at the United States Patent Office as a patent examiner. During the five and half years at the USPTO, Austin clerked for the Board of Patent Appeals and served as a patent examiner in different areas including medical fields, business methods, and valves.

After obtaining his JD from the Columbus School of Law in Washington DC, Austin eventually made his way out to Orange County and took a position with Foxconn as the head of US patent prosecution for the Tsinghua-Foxconn Nanotechnology Research Center. On many trips to Beijing, he presented several lectures at Tsinghua University to students, professors, and administrators on US patenting system and strategies.

After leaving Foxconn, he started working as a solo practitioner at the Law Office of Austin Bonderer, PC. In his practice, he has assisted many individual inventors, small companies, start-ups, and large corporations. Given his unique experience as a patent examiner, in-house counsel, and international work, Austin possesses exceptional ability to help his clients obtain the intellectual property they need.


#CSUF

For more details on CSUF Entrepreneurship:
http://business.fullerton.edu/Center/Entrepreneurship/

For more details on how we help people become entrepreneurs:
http://business.fullerton.edu/Center/Entrepreneurship/Incubator

For more details on how CSUFConsulting can help businesses thrive:
http://business.fullerton.edu/Center/Entrepreneurship/Consulting

Attend one of our events for entrepreneurs or sign up for a free mentoring session:
http://bit.ly/CSUFEntrepreneurEvents

Knowledge @ CSUF Entrepreneurship video series:
http://bit.ly/csufknowledge

 

Trade Secret Protection – Key Points for Entrepreneurs to Know

Stephen LaCount Intellectual Property Talk Trade Secrets CSUF Startup Incubator IrvineDuring Stephen LaCount’s talk titled Intellectual Property and the Entrepreneur at the CSUF Irvine campus Stephen went over a lot of interesting topics; topics that are immediately valuable to the entrepreneurs that were there. One of the parts of his talk that I liked in particular was his information on trade secret protection.

Here are some key takeaways that I had:

  • If you do it right, a trade secret can last forever (i.e. Coca Cola)
  • “Trade Secret” means information, including a formula, pattern, compilation, program, device, method, technique, or process that: 1. Derives independent economic value… from not being generally known to, and not being readily ascertainable by proper means by other persons… and 2. Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.
    • This is from the Model Trade Secrets Act
  • One example that Stephen gave was how Texas Instruments successfully sued someone who flew a plane over a factory that they were building so that he could get pictures of how they were doing things, which violated their trade secrets
    • (I tried finding this story but, alas, couldn’t find it)
  • If the company or person with a trade secret doesn’t properly maintain it’s trade secrets then they will go to the public domain
    • That is, obviously, not good, so you have to work to protect your trade secrets
  • How to protect your Trade Secrets:
    • Restrict visitors to your work site – control or deny access to sensitive areas
    • Limit disclosure – implement strict “need to know” standard
    • Internal procedures and safeguards – you will need to create these, train your people on how to properly follow them, and have a system that ensures employee fidelity to your procedures and safeguards
    • Explicit written agreements: what is being disclosed and for what purpose?
      • Any relationship of importance should have a non-disclosure agreement (NDA) attached to it
    • Stamp and legend documents: such as “Confidential and Proprietary”; “Do Not Duplicate or Distribute”
  • Even though there is a lot that goes into protecting a trade secret there is no paperwork that you have to file with the government and a trade secret theoretically will never expire
  • What about past employees? Do they have to protect trade secrets from their former employer?
    • The answer is, of course, yes. Past employees do have a duty to protect the trade secrets of their former employees

The part about trade secrets was only a small fraction of Stephen’s overall talk and we will be working on putting together video segments of this talk for our Knowledge @ CSUF Entrepreneurship video series and Stephen’s segments will be published over the next couple of months.

So make sure to check back in frequently so you won’t miss any of the videos or, better yet, become a CSUF Entrepreneurship Insider. Insiders get a weekly update featuring the ideas, news, events, and success stories that are coming out of the CSUF Entrepreneurship community.


#CSUF

For more details on CSUF Entrepreneurship:
http://business.fullerton.edu/Center/Entrepreneurship/

For more details on how we help people become entrepreneurs:
http://business.fullerton.edu/Center/Entrepreneurship/Incubator

For more details on how CSUF Consulting can help businesses thrive:
http://business.fullerton.edu/Center/Entrepreneurship/Consulting

Attend one of our events for entrepreneurs or sign up for a free mentoring session:
http://bit.ly/CSUFEntrepreneurEvents

Knowledge @ CSUF Entrepreneurship video series:
http://bit.ly/csufknowledge

Join CSUF Entrepreneurship this Wednesday at the CSUF Irvine Campus for a Special Event

 

IP Talk in Irvine for CSUF EntrepreneurshipThis Wednesday at 6pm at the CSUF Irvine campus we are thrilled to have lawyer and professor Stephen LaCount come in to give a talk titled Intellectual Property and the Entrepreneur. I am sure that this will be a fascinating event with a lot of great information that entrepreneurs can use to bolster their IP game. And, even if you don’t think you have any IP (i.e. patents, trademarks, copyrights, etc.) you should still attend this event because 1. You probably do have IP and 2. Even if you don’t have IP now you will at some point in the future and you need to know how to protect and leverage these incredibly important assets.

We hope to see you there!

The remainder of this post is the weekly CSUF Entrepreneurship Insider. If you haven’t already done so, make sure to become an Insider so that you don’t miss any of the news, events, or knowledge that comes out of the CSUF Entrepreneurship community.

The CSUF Irvine campus represents a special opportunity for the CSUF Entrepreneurship community. There, we will be able to reach more people from the community in the classroom, at the new CSUF Startup Incubator location at the CSUF Irvine campus once it opens (hopefully) later this year, and through events there as well.

Our first event for the public will be held this Wednesday at 6pm at the Irvine campus. Professor and lawyer Stephen LaCount will be giving a talk titled Intellectual Property and the Entrepreneur at that time. At this talk, Stephen will be going over IP essentials that every entrepreneur and business owner must know to effectively protect their IP (i.e. patents, copyrights, trademarks, etc.) and how to leverage those assets to get the most out of them.

We will be serving pizza and soft drinks at this event. To register, including learning important information about parking at this location, please go to the event page.

We look forward to seeing you at our first event on the CSUF Irvine campus and at our events in the future in Irvine, the Fullerton campus, the CSUF Startup Incubator office in Placentia, and wherever else we have events!

Sincerely,

John Bradley Jackson
Director & Professor
CSUF Center for Entrepreneurship, CSUF Consulting,
& CSUF Startup Incubator

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Intellectual Property and the Entrepreneur – CSUF Startup Incubator

Join us at the CSUF Irvine campus to learn about Intellectual Property from lawyer Stephen LaCount

Join us at the CSUF Irvine campus to learn about Intellectual Property from lawyer Stephen LaCount

Usually, the most valuable thing that young companies own is their intellectual property. This is the portfolio of patents, copyrights, trademarks, and trade secrets that a company creates and there can be a tremendous amount of value there. Unfortunately, too many businesses do not fully utilize their intellectual property.

That’s where a good lawyer like Stephen LaCount comes in. Stephen works with his clients to develop a strategy to protect their IP and fully utilize it. In this talk at Cal State Fullerton’s Irvine campus for the CSUF Startup Incubator, Stephen will go into the important lessons that every entrepreneur should know about intellectual property. After attending this talk, attendees will have a clearer understanding of what their intellectual property is, how to protect it, and what to do with it.

Pizza and soft drinks will be served at this event.

We hope to see you there! Reserve your ticket today.

[You will need to purchase a parking permit to park on this campus. Information for parking can be found here: http://www.fullerton.edu/irvinecampus/about/campusmap.php]


Stephen H. LaCount Biography

Prior to founding his own boutique firm in March of 2005, Stephen LaCount was affiliated with Nixon Peabody LLP, a top-50 law firm headquartered in the Northeast. He was previously a partner (and member of the firm’s Executive Committee) in the national law firm of Arter & Hadden LLP from 1992-2003. He attended Boston University (B.A.), New York Law School (J.D.) and New York University School of Law (LL.M. Trade Regulation).

Mr. LaCount has extensive experience representing a broad range of corporate clients and has also served as in-house counsel with a number of prominent multinationals, including Studebaker-Worthington, Inc., Westinghouse Electric Corporation, and Esterline Technologies. In 1987, he relocated from Fairfield, Connecticut to Irvine, California to join AST Research, Inc., a Fortune 500 personal computer manufacturer, where he served as General Counsel for three years before entering private practice.

His practice emphasizes domestic and international business transactions, including acquisition and sale of technology assets, general counseling/emerging growth companies, intellectual property protection and exploitation, technology licensing and development, software transactions and information technology contracting, outsourcing, strategic partnering arrangements, internet, e-business, privacy and data protection, antitrust, and specialized regulatory matters involving International technology transfer.

He is also a long-standing member of the American Arbitration Association’s National Roster of Neutrals and has arbitrated a wide variety of disputes involving intellectual property rights and technology and franchise-related agreements and transactions.

Stephen LaCount served as the Laspa Visiting Professor of Entrepreneurship Law and Practice at Harvey Mudd College (the engineering and science school of the Claremont college consortium) and has also taught law-related courses at Cal State Fullerton’s Mihaylo School of Business and Economics, and at Chapman University’s Fowler Law School and Argryos School of Business and Economics.

Mr. LaCount served on the board of directors of the Computer Law Association (currently known as the International Technology Law Association) from 1992-1998 and continues to serve as an active member of ITLA. In 1991 and 1995, he chaired the CLA’s biennial Pacific Rim Computer Law Conferences in Newport Beach and San Francisco. He co-founded the High-Tech Innovation Awards, an annual Orange County technology company showcase currently in its 20th year. In May of 2007, he was awarded Tech America’s prestigious Community Service Award.

He is a nationally recognized lecturer and author on technology contracting and international trade subjects and most recently served on the faculty of the 8th International Asian Conference in Bangalore, India. Mr. LaCount has been ranked by Who’sWho Legal as one of California’s top Information Technology lawyers for the past 15 years.

Stephen LaCount is admitted to the state bars of New York and California.


#CSUF

For more details on CSUF Entrepreneurship:
http://business.fullerton.edu/Center/Entrepreneurship/

For more details on how we help people become entrepreneurs:
http://business.fullerton.edu/Center/Entrepreneurship/Incubator

For more details on how CSUF Consulting can help businesses thrive:
http://business.fullerton.edu/Center/Entrepreneurship/Consulting

Attend one of our events for entrepreneurs or sign up for a free mentoring session:
http://bit.ly/CSUFEntrepreneurEvents

Knowledge @ CSUF Entrepreneurship video series:
http://bit.ly/csufknowledge

 

Daily Titan Covers Patent Talk at CSUF Startup Incubator

David Jafari 10 Rules Everyone Should Know About PatentsOn Wednesday, patent attorney and friend of the Center for Entrepreneurship and CSUF Startup Incubator David Jafari gave a great talk on patents titled: 10 Rules Everyone Should Know About Patents. David has given this talk in the classroom but this was the first time that he gave this talk at the CSUF Startup Incubator and two Daily Titan reporters were there to cover it.

Here is an excerpt from the Daily Titan story written up by Andrew Salmi:

Cal State Fullerton’s Center for Entrepreneurship hosted a discussion Wednesday at its CSUF Startup Incubator overviewing what up-and-coming entrepreneurs should know before pursuing a patent for their inventions.

The event featured David Jafari, a patent attorney licensed in Orange County who has been involved in intellectual property, business law and employment matters. With 17 years of experience, Jafari offered insight on patents and how to avoid making mistakes with them.

“It’s a property right that the government grants to the inventor of the idea that’s memorialized and claimed in that document. It’s a contract between the state and the inventor,” Jafari said.

You should really click on the link above to read the entire article that Priscilla Bui also contributed to. And make sure not to miss any of our other events and news by signing up for our weekly email update, the CSUF Entrepreneurship Insider.

Did you miss David’s excellent talk? You’re in luck! His entire presentation can be viewed in the video below.


#CSUF

For more details on CSUF Entrepreneurship: http://business.fullerton.edu/Center/Entrepreneurship/

For more details on how we help people become entrepreneurs: http://business.fullerton.edu/Center/Entrepreneurship/Incubator

For more details on how CSUF Consulting can help businesses thrive: http://business.fullerton.edu/Center/Entrepreneurship/Consulting

Attend one of our events for entrepreneurs or sign up for a free mentoring session: http://bit.ly/CSUFEntrepreneurEvents