Posts Tagged "IP strategy"

Hardware Startups: Can I Patent My Invention?

August 29, 2016
3D Innovations

IP_patentA patent for your invention is useful, in that it gives you exclusive rights to the idea/product (for twenty years), allows you to license the invention and provides a strong market position. However, to obtain a patent your invention must meet certain criteria. Here are a few important questions to ask yourself in determining whether your invention is patentable.

  1. Did you invent it? A patent can only be applied for by the actual inventor or co-inventor. If you were not the inventor, but contributed financially, you will not be able to patent the product on your own. If the inventor was employed by another person or company to develop the invention, the patent will still be issued under the inventor’s name. However, ownership of the patent will be with the employer.
  2. Is your invention useful? Under U.S. law the invention must be “useful” to be eligible for protection. To meet this requirement the product must provide some benefit and is capable of use. It is important to note that most inventions meet this criteria.
  3. Is your invention “non-obvious”? If your product is already common knowledge in its field, then it would not meet this requirement. This determination is made by deciding whether the invention sought to be patented would have been obvious “to a person having ordinary skill in the art to which the claimed invention pertains”. Determination of whether a particular change or improvement is “obvious” is one of the most difficult determinations in patent law.
  4. Does it fall under a patentable category? Patents are available for processes, machines, articles of manufacture, and improvements to any of those classes. If your idea is in regards to laws of nature, physical phenomena, abstract ideas or non-useful objects, it will not be eligible for a patent.
  5. Has your invention been disclosed to the public? If so, your invention will not be patentable. This requirement states that your idea must be “new” and not discussed publicly prior to the date of the filing. If you invention has been made available for public use or disclosed in a prior patent application it will not be eligible for a patent.

Have additional questions regarding the patent process? We highly recommend a visit to the USPTO website. We are also able to help answer any questions you may have, please e-mail them to info@3d-innovations.com

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3D Innovations is a Product Development Company – from the 3D Design to a fully functional 3D Prototype & Product.

Startup Connector is a Manufacturing Accelerator helping companies commercialize—turning ideas into products.

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Intellectual Property: Should You Consider A Licensing Business Model?

June 2, 2016
3D Innovations

ip-3d-printing-innovations-100In our Case Study blog post last week, Transitioning From Idea To Manufacturable Product, we discussed the ways in which we helped a client secure a licensing agreement. For many inventors a licensing agreement is often a great option since it lets them develop a product, but then puts the expenses associated with commercialization on a more experienced manufacturer.

What is a licensing agreement?

With a licensing agreement, an inventor (the licensor) develops an invention and then protects that invention through a patent, copyright, trademark, or trade secret, and thus creates intellectual property (IP). The inventor—the owner of the intellectual property—then licenses the invention to a second party (the licensee) whose responsibility is to commercialize the invention. As compensation for allowing another party to use its intellectual property, the licensor will receive a royalty.

Licensing agreements are becoming more common than in the past and are open to more inventors. This has also increased the number of inventors approaching manufacturers and, thus, increased competition.

What are the benefits of a licensing agreement?

Below is a list of some of the main benefits of licensing your invention/IP.

  • The licensor (inventor) does not have to finance the commercialization process.
  • The licensor avoids the need to create and operate a company.
  • The innovation will most likely get to market faster because a larger, more experienced company is handling the commercialization.
  • The innovation may reach more markets if the licensee is a large, well-funded enterprise.
  • The licensor retains ownership of the intellectual property.

How do I evaluate a potential licensee?

When evaluating a potential licensee, you should focus on its ability to effectively commercialize your invention/IP. Often times that means considering companies that have a proven track record of marketing and selling products based on inventions similar to yours. Depending on the invention, the best way to commercialize it could also be to license it to a startup, a manufacturer, or a bunch of companies in separate territories.

Suggestions for securing a licensing agreement:

  1. Assess the complexity of our product. Is there a way to get a working version developed without extensive costs? 3D printing/additive manufacturing is a frequently used method to get a functional prototype ready because of its speed and the reduced costs associated with the technology.
  2. Identify manufacturers. Find out which manufacturers currently sell product lines to large retailers where you can see that your product would be a good fit.
  3. Create a functional prototype. Create a functional prototype of your product and pitch retail buyers. The goal is to get a commitment before you actually launch. You can possibly even offer them a few months of launch exclusivity. The mock-up of your packaging is also critically important. Your product must look as retail ready as possible.
  4. Setup a meeting with an IP attorney. The attorney will be able to go over the legal aspects of the licensing agreement with you and help come up with a plan that best suits your needs.
  5. Approach the identified manufacturers. If you want to get the attention of a manufacturer, before you even talk about your product, pitch the prospect your new customer, growing sales or the commitment from a major buyer. You’ll get an appointment, and your product has a better chance of moving to the front of the line in the new product development funnel.

Have additional questions about licensing agreements? We would be happy to help answer them, please e-mail info@3d-innovations.com

Articles Referenced:

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3D Innovations is a Product Development Company – from the 3D Design to a fully functional 3D Prototype & Product.

Startup Connector is a Manufacturing Accelerator helping companies commercialize—turning ideas into products.

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Top Intellectual Property Questions From Startups

May 17, 2016
3D Innovations

Intellectual property (IP) is not exactly “fun or exciting” — however, it is the most important aspect of your startup and needs to be protected. Securing and protecting the intellectual property rights to your invention is key to successful commercialization.

Below we answer some of the common IP questions we hear from entrepreneurs.

When should I start thinking about protecting my startup’s IP?

IP2Immediately after your startup is formed is the best time to get all the founders on the same page regarding IP. The most valuable asset of your startup is in fact its intellectual property; therefore it should be at the top of your ‘to-do’ list. IP is the heart and soul of your business and needs to be protected by patents, copyrights and/or trademarks — which ever makes the most sense for your business and invention. Without a proper IP strategy, you are leaving the door open for major complications down the road.

What type of IP protection is necessary for my business?

Patents, copyrights and trademarks are all forms of intellectual property. While all three types of IP are indeed essential for success, hardware-focused startups rely heavily on patents.

What exactly is a patent? A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office (USPTO). U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. There are three types of patents: utility, design and plant patents.

  1. Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
  2. Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
  3. Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

Why should I even consider IP protection for my startup?

If you plan on moving towards commercialization with your product, you are going to want to have control over your startup’s IP. Patents can bolster competitive advantage and assist in the streamlining of the entire commercialization process. If your startup is planning on seeking outside funding from VCs, having all of the founders on the same page regarding IP protection is imperative.

While patents do not guarantee success, they do allow you to secure all rights and claims to your invention. Without patent protection, some inventions cannot be commercialized because both the inventor and investors understand that the product can easily be duplicated, leaving them with no recourse if their product is copied.

How do I file a patent for my invention?

There are a few necessary steps to take before you actually file a patent. First, a patent search will need to be conducted to make sure that the invention does not already exist. The USPTO makes it possible to conduct a preliminary patent search on your own; however, it is highly recommended that you consult with a licensed patent search firm to assist with the bulk of the research. These firms have vast experience researching and are extremely knowledgeable in the classification systems.

If you plan on filing a utility patent, you will next need to decide whether to file a provisional or non-provisional utility patent. In simple terms, a provisional application is a quick and inexpensive way to begin protecting an invention while you continue its development, conduct market testing and obtain funding. A provisional patent gives you exactly one year to file a non-provisional utility patent application and move forward in the patent process.

When it comes time to begin your patent search and subsequent  patent filing, we highly recommend that you consult with a licensed patent attorney to review your patent options and decide what will be the most-beneficial for your specific invention.

Have additional questions regarding intellectual property? Send them our way at info@3d-innovations.com

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3D Innovations is a Product Development Company – from the 3D Design to a fully functional 3D Prototype & Product.

Startup Connector is a Manufacturing Accelerator helping companies commercialize—turning ideas into products.

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When It Comes To Your Startup’s IP—Timing Is Everything

February 4, 2016
3D Innovations

It is always best to set up rigorous intellectual property (IP) practices from Day One, but more often than not it gets pushed to the side for ‘later’. If you take a step back though and put this into perspective, ask yourself one question, What is my startup’s most valuable asset? It is not the workspace or funding, but the intellectual property—the disruptive idea, brilliant invention or genius breakthrough. The IP is the heart and soul of the business. This integral piece of your startup needs to be protected by patents, copyrights and/or trademarks as well as through a few internal measures. Without a proper IP strategy, you are leaving the door open for major complications down the road.

lightbulb1To best protect your startup’s most precious asset, it’s critical to have all founders, employees and anyone involved in creating the idea sign over their intellectual property rights to the startup itself. The best time to do this is in the early-stages of business, but if that has already come and gone, we suggest doing it ‘now’ instead of ‘later’. Here are a few other instances where locking in a firm IP process is beneficial.

  • When The Founders Get Serious. Your startup has just been incorporated and the team is ecstatic. Everyone is ready to get to work and propel the business forward. Press the pause button right here for a minute, and have everyone assign IP rights to the company and document who’s come up with which business concepts. While everything is moving smoothly now, it may not be in a few months or years, and it is best to get this information locked in from the get-go.
  • When There Is A New Hire. Hiring your first employee? This is an exciting time! However, it is also a time that your startup begins to become more vulnerable and your IP needs to be protected. “Have new hires ink an agreement with a ‘present assignment’ clause that assigns everything they invent or create, whether it’s patentable or not, to the company, effective on their date of hire. Make sure the agreement includes a ‘further assurances’ clause, in which the employee agrees to cooperate in the future, if needed, to assist with showing that the startup owns the IP. To top it off, the agreement should include confidentiality obligations, permitting them to use or reveal confidential information only for the startup’s benefit.” (Tech Crunch)
  • When Seeking A Patent. Filing a patent application with the United States Patent and Trademark Office can be quite a process. Before you submit your application have every inventor assign all rights for the invention to the company. This then becomes public record, so it’s easy to see whether the company owns all the rights to its IP.
  • Before Searching For Funding. If you get all founders to sign over IP rights at the beginning, finding funding gets much less complicated. If a VC gets the slightest hint of trouble between founders, they tend to walk. Having your team all on the same page is vital.

We highly suggest that you take the time early-on to consult with a licensed IP attorney to assist in the development of a strong IP strategy for your startup.

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3D Innovations is a Product Development Company – from the 3D Design to a fully functional 3D Prototype & Product.

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