Mike Kasdan, a partner at Wiggin and Dana LLP, gave a presentation on protecting ideas and inventions. He has experience advising startups on intellectual property and legal issues. The presentation covered the growing importance of intellectual property as a corporate asset. Patents, copyrights, trademarks, and trade secrets were discussed as types of intellectual property protection. The presentation provided an overview of the patent system, including the requirements to obtain a patent, types of patent applications, and patent prosecution process. It emphasized the strategic value of intellectual property and how intellectual property strategy should align with business strategy.

1. Startup School:
Foundations
Protecting Your Idea or
Invention
Michael J Kasdan, Wiggin and Dana
February 28, 2017

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o Mike Kasdan is a Partner in the IP Practice Group of Wiggin
and Dana LLP, with a background in electrical engineering,
computer science, and technology consulting. He works with a
broad range of technologies, including software, consumer
electronics, wireless devices, computer architecture and
networks, semiconductor chips, Internet and ecommerce
applications and platforms, and medical products and devices.
o After graduating from University of Pennsylvania and NYU
School of Law, Mr. Kasdan has been on the ground floor of
efforts to turn New York City and State into a hub for
innovation and entrepreneurship in technology, Internet, e-
commerce and new media. He counsels new companies on
legal, financing, business, and particularly intellectual property
and contact-related issues.
o He also now serves as Chairman of the Board of Directors of
CityScience, a nonprofit organization promoting science,
engineering, and math education in NYC schools, and writes
on varied topics – including social justice, sports, politics, and
mental health – for The Good Men Project.

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There has been a fundamental shift in the role of IP as
a corporate asset in our information economy.
In 1975, 83 percent of value of S&P 500 companies was
tangible assets
By 2015, this dynamic has more than flipped, with 87
percent of value now residing in intangible assets
The Value of IP is Growing

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Over the past several years, the value of U.S. IP has
become acknowledged to be enormous:
IP-intensive industries accounted for $6.6 trillion in
value added in 2014, up more than $1.5 trillion (30
percent) from $5.06 trillion in 2010. Accordingly,
the share of total U.S. GDP attributable to IP-
intensive industries increased from 34.8 percent in
2010 to 38.2 percent in 2014.
Intellectual Property and the U.S. Economy: 2016 Update
U.S. Patent and Trademark Office
Value of IP is Acknowledged

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IP should now viewed as a strategic asset with the
potential to generate revenues, and an entry-point into
new markets and opportunities, in addition to its
traditionally understood role as legal protection
against competitors.
Successful sophisticated companies are expected to
understand and have a strategic plan not only for
obtaining IP, but also for how to use that IP.
IP Is a Strategic Asset
That being said. . . IP does not make the business
on its own!
• Business strategy drives IP strategy

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Business Plan, Venture Funding,
Corporate Formation Phase
Ongoing
Establish business value
proposition
Demonstrate what
differentiates company and
produce from competitors
Grow business and product
Build value in IP
Reduce risks to business
Intellectual Property Issues
Protecting own inventions
and brand
Necessary third party
IP/licensing
Steps to reduce IP risk
when launching new
product/service/brand or
entering new market
Contractual Issues
– Employment agreements (non-
competition clauses, confidentiality
provisions, ownership of IP clauses),
NDAs, IP licenses, in-licenses, out-
licenses, cross-licenses
Intellectual Property Issues
– Protecting own inventions and brand
– Accessing IP of others
– Steps to reduce IP risk when launching
new product/service/brand or entering
new market

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Types of Intellectual Property
Utility Patents:
A grant by the USPTO
of the sole right to
make, use, and sell an
invention for a limited
period of time.
“Utility Patents” refer to
a new, useful, and non-
obvious process,
machine, manufacture,
or composition of
matter, or any new and
useful improvement.
Copyrights:
Original works
of authorship
fixed in any
tangible
medium of
expression.
Trademarks:
Word, name,
symbol or
device used to
identify the
goods of a
manufacturer or
merchant and
distinguish
those goods
from the goods
of others.

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Copyright
Original works of authorship fixed in
any tangible medium of expression.

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Trademarks
Words, symbols, logos, slogans, or product
packaging/design that identify source.

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Other Types of Intellectual Property
Contracts:
Private agreements
between parties
Misappropriation
Trade secrets:
Formula, pattern, device
or compilation of
information kept secret
Design Patents:
Ornamental appearance of an article of manufacture
such as product configuration or fashion design
– lasts 14 years, protects design not functionality

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Patents

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A social contract between an inventor and society: the
inventor discloses their invention to the public and in
return the inventor is granted a temporary right to
exclude others from making or practicing the
invention.
.
Patents are the strongest form of IP protection,
but also the shortest in duration and the most
expensive to obtain.
What is a Patent?
Patent Protection Basics: What Is a Patent?
“To promote the progress of science and useful arts, by
securing for limited times to authors and inventors the
exclusive right to their respective writings and discoveries.”
- U.S. Const., Art. I, Sec. 8

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Utility Patents
A patent is a right to exclude others for a limited time from making, using or
selling an invention.
Pointer: This is not a right to practice the invention because your invention
might implicate someone else’s patent.
Which means that even if you have a patent covering a sail to power a
boat, your product may still infringe a patent covering a boat

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The life of a patent begins with an invention.
It ends with the invention entering the public domain.
Application Issuance Expiration
Prosecution Enforceable
Patent Term (20 Years)
Invention Public Domain
Patent Protection Basics: What Is a Patent?

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The U.S. is now a First-to-File system
• This gives priority to the inventor who first files a patent
application, no matter when you invented the invention,
creating a “race to the patent office”
Delays in pursuing patent protection can result in forfeiture of
patent rights or even result in those rights being obtained by
others
Take away point: Important to be cognizant of the patent
process early in the innovation cycle
The U.S. Is a “First-to-File” System – Early Filing
Patent Protection Basics: What Is a Patent?

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Provisional: A provisional remains pending for one year, after
which a non-provisional must be filed. Provisionals provide a
temporary stake in the ground and memorializes an early filing
date --relatively quicker and less costly to prepare and file.
Not examined by USPTO
Non-Provisional Utility: Application most frequently thought
of when the word patent is used. Includes claims to protect
the utility of an apparatus or process that are examined by the
USPTO.
Design: Protects the aesthetic design of an object.
Types of Patent Applications
Patent Protection Basics

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The Parts of a Patent: Front Cover and
Abstract
Patent Protection Basics

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The Parts of a Patent: Drawings
Patent Protection Basics

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The Parts of a Patent: Specification
Patent Protection Basics

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The Parts of a Patent: Claims
Patent Protection Basics
“The name of the game is the claim”

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Novelty - 35 U.S.C. 102: to be patentable, an
invention must be new.
Non-Obviousness - 35 U.S.C. 103: to be
patentable, an invention must not be obvious
over what came before it.
Eligible Subject Matter - 35 U.S.C. 101:
Governs what can be patented
Requirements to Receive a U.S. Patent
Patent Protection Basics: Can You Get a Patent?

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(a) A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed
publication, or in public use, on sale, or otherwise available to
the public before the effective filing date of the claimed
invention; or
(2) the claimed invention was described in a patent issued
under section 151, or in an application for patent published or
deemed published under section 122(b), in which the patent
or application, as the case may be, names another inventor
and was effectively filed before the effective filing date of the
claimed invention.
102 – Anticipating Prior Art – Statute Text
Is the invention “novel”?
Patent Protection Basics: Can You Get a Patent?

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Exceptions to 102(a)(1) [Limited to 1 Year]
(A) Any “disclosure” coming from the applicant (“directly or
indirectly”) [inventor sourced disclosure]
(B) Disclosures by others made after a “public” disclosure by
the applicant. [grace period disclosure]
Exceptions to 102(a)(2) [Limited to 1 Year]
(A) Not prior art if the 1st filer derived invention from 2nd
filer. [inventor-sourced disclosure]
(B) Not prior art if the 1st filer filed after "public" disclosure
by applicant / 2nd filer. [grace period disclosure]
(C) Common assignee
102 – Anticipating Prior Art – Exceptions
Patent Protection Basics: Can You Get a Patent?
Patent Protection Basics: Can You Get a Patent?

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A patent for a claimed invention may not be obtained,
notwithstanding that the claimed invention is not
identically disclosed as set forth in section 102, if the
differences between the claimed invention and the
prior art are such that the claimed invention as a whole
would have been obvious before the effective filing
date of the claimed invention to a person having
ordinary skill in the art to which the claimed invention
pertains.
103 – Obviousness – Statute Text
Is the invention “non-obvious”?
Patent Protection Basics: Can You Get a Patent?

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“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.”
Historically, there are three judicially-created exceptions to patentable
subject matter:
(i) laws of nature,
(ii) natural phenomena, and
(iii) abstract ideas are not eligible for patent protection, even if
new and not obvious.
101 – Patentable Subject Matter
Is the invention eligible for patent protection?
Patent Protection Basics: Can You Get a Patent?

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Software Patents/Apps and Genetics/Biotech
• Three traditional exceptions to patentable subject matter are not eligible
for patent protection :
(i) laws of nature;
(ii) natural phenomena, and
(iii) abstract ideas.
• In 2014, the Supreme Court in Alice Corp. v. CLS Bank International struck
down the previous standard for what constitutes an abstract idea and
instead gave vague guidelines less favorable to software patents
• The last two years have produced profound uncertainty, with thousands
upon thousands of software patents being struck down
• Business method patents largely defunct
• Recent cases have begun to highlight areas where patent eligibility
remains, particular technologies that improve computer function, solve
computer-only issues, or solves problems related to particular pieces of
hardware
Patent Protection Basics: Can You Get a Patent?
101 – Patentable Subject Matter

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The legal test of Alice:
1. Determine whether the claim at issue is directed to
an abstract idea. If it is not, then the claim passes
the 101 patentability requirement.
2. If it appears that the claim is directed to an
abstract idea, consideration must be given to each
claim limitation (both individually and as an
ordered combination) to see if the claim covers an
“inventive concept” that is significantly more than
just the abstract idea, i.e., a patent eligible
application of the abstract idea.
ALICE
101 – Patentable Subject Matter
Patent Protection Basics: Can You Get a Patent?

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Protect Against Competition
Period of exclusivity Barrier against competitors for
key products/features
Compensation and injunctions
If others practice your invention
(infringe your patent)
Raise Revenue
Patents make ideas tangible Value as an asset
(collateral for a loan)
Pending patent applications
(“patent pending”) Marketing and fundraising tool
Defensive/Cross-licensing Deter/avoid lawsuits, trading
chips
Licensing Licensing revenue
Enhance industry recognition Marketing opportunities
Patent Protection Basics – Why Get a Patent?

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Facebook Patents the News Feed
http://www.cbsnews.com/8301-505124_162-57425130/facebook-patents-stories-about-online-friends/

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36Patent Protection Basics (Case Studies)

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39Patent Protection Basics (Case Studies)
“System and method
for providing location-
based and time-based
information to a user of
a handheld device”

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• Protect ornamental features.
• Shorter duration: 14 years
• Simple to get
• Can be very useful
Lululemon - yoga pant Apple- iPhone
Design Patents
Design Patents

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Used to be thought of as a weaker, less preferred type
of patent (but this is changing . . .)
What are they?
• A patent that protects the Ornamental Design of an
Article of Manufacture
o “Ornamental Design” – shorthand for the look and
feel of something
o “Article of Manufacture” – a product
• The patented aspect must not functional
What exactly are design patents, and how are
they different from utility patents?
Design Patents

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35 U.S.C. 171 Patents for designs.
(a) IN GENERAL.—Whoever invents any new,
original, and ornamental design for an article of
manufacture may obtain a patent therefor, subject
to the conditions and requirements of this title.
Requirements of novelty and non-obviousness, as
well as those of 35 USC 112
Term: 15 years from date of grant (pre-May 2015, it is
14 years)
Design Patent Details
Design Patents

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1 Claim – describing various
views of the product in
reference to the drawings
Drawings - the focus of the
application
• Painstaking attention
should be paid to details
such as curves and edges,
as well as broken/dashed
lines
What is in a Design Patent?
Design Patents

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Jewelry
Furniture
Car grills
Electronics
Clothing (shoes)
Appliances
Consumer health products
User Interfaces
What types of designs can you patent?
Design Patents

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Design patents are able to provide a quicker and
cheaper than utility patents
15 years of protection, no maintenance fees
The GUI can be patented – this protects the look and
feel of an app, not its function
• Allows you to protect the “user experience” where
you are functionally no different than other
companies
Must be careful to include quality drawings that
properly claim the scope of the invention
Can be used as a “gap filler” until develop “secondary
meaning” for trademark or trade dress protection.
Considerations– Design Patents
Utility Patents

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Disclose publicly
• Publish a white-paper
• Publish on a registry
Follow competitor patent applications
• Submit a third-party prior art submission to the
Examiner
Other Alternatives
Alternatives to Patent Protection

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Defensive: Other Due Diligence
Defensive; Protecting Selves Against the Patents of Others
Protecting your business against the patents
of others.
• You do not have to copy to be liable for patent
infringement
• Clear key products/features for use
• Conducting right to use/freedom to operate searches

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Trade Secret
• Guard your code – don’t share it
• Don’t grant an open source license
• No government office to register with
• Lasts forever; as long as keep secret
• No protection is someone independently develops or
reverse engineers
Copyright
• Don’t need to register it (but preferable)
• Protects your code
• Very narrow protection (actual copying), but strong
• Registration is cheap and relatively quick (Less than a year)
Other Available Forms of IP
Alternatives to Patent Protection

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Trademark/Trade Dress
• This will protect your brand
• Covers Words, Symbols, Logos, Slogans or product
packaging that identify a source of origin
o Can be a sound (Nike Swoosh)
o Color (UPS Brown)
• If you gain name recognition from first mover
advantage, trademark allows you to protect that
• Very important for app space
• Relatively inexpensive (About $2,000 to register
depending on classes)
• Relatively quick (under a year if no Office Actions)
Alternatives to Patent Protection
Other Available Forms of IP

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Trademarks

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Functions of a Trademark

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User Agreement/Terms of Service
• Blended legal/customer-facing document
• License to company to use content
• Provisions to address inappropriate content/IP issues
• Notice and takedown procedures
Privacy Policies
• Blended legal/customer-facing document
• “Clearly and concisely” inform users how you collect and use
data
• Tailor to users and business
Data Security
Other IP-Related Considerations
(Apps/Online/Software)
Alternatives to Patent Protection

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Agreements to Protect IP
Use written agreements with employees and third parties:
Employment Contracts
• For new employees. Include provisions for: confidentiality, non-
competition, ownership of inventions, best-efforts, and exclusive
employment.
Assignments
• To transfer an employee’s interest in any IP asset to the employer
during the period of employment.
Licenses
• To generate revenue for the licensor
without transferring ownership in the
IP asset.
Non-Disclosure Agreements
• To protect trade secrets and other
confidential information from being disclosed.

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Patenting should be business driven, to claim something
commercially viable and having economic value
Protecting your commercially significant products/features with
patents (or other IP) is important, but it doesn’t make the
business on its own.
Remember to also think about reducing risk and avoiding the IP
of others.
Take Away Points
Some Take Away Points

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Take Away Points
Questions
Where do I go for help:
1. NYU Entrepreneurial Institute
2. Office of Industrial Liaison (NYU)
3. Counsel with expertise obtaining patents and
other forms of IP in your space

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Take Away Points
NYU Entrepreneurial Institute
• The University's team of startup experts
offer educational programming and events,
industry-specific resources, and funding
support to help inspire, educate, connect,
and accelerate entrepreneurs from across
NYU.
• Visit us at entrepreneur.nyu.edu to learn
about all the programs, events, and
resources NYU offers aspiring and veteran
entrepreneurs, and to discover what other
NYU entrepreneurs are working on.
NYU welcomes the opportunity to talk
with YOU about your research & startup
ideas!
dee.dao@nyu.edu
@nyuentrepreneur
entrepreneur.nyu.edu
16 Washington Place

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Take Away Points
NYU Office of Industrial Liaison
If you are working on projects that are funded with federal
grants OR use NYU resources
– File an invention disclosure form with OIL
If you would like to learn more about IP policy at NYU,
contact OIL

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Take Away Points
Today’s Speaker: IP Counsel, Mike Kasdan
Contact Information:
Michael J. Kasdan, Esq.
212.551.2843
mkasdan@wiggin.com
@michaelkasdan

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