Design, Plant, and Utility Patents: Protecting Your Startup's Intellectual property
The US Patent and Trademark Office issues at least three kinds of patents. Utility patents are generally well known. They protect novel products, systems, techniques, and processes. Two other kinds of patents issued by the USPTO may be relevant to startups. Design patents protect the ornamental aspects of things and can be hugely important as illustrated by the Apple v Samsung infringement litigation over certain aspects of phones and tablets. Plant patents are perhaps becoming more important. For example, 50 plant patents have been issued by the US Patent Office protecting many varieties of cannabis and hemp. Startups should also consider trademarks as an extension of their patent strategies. Now seems like a great time to review the kinds of patents and why patents and other forms of intellectual property matter.
Questions that our panel of experts will address include:
What are utility, provisional, design and plant patents?
What protections do each of these patents offer to a company, its investors, and shareholders?
What are the tradeoffs between investing in IP, product development, and getting to market?
What are the technology and market differences in the timing of investing in IP?
When do investors care about IP?
When and where should companies consider protecting IP in foreign countries?
This meeting’s presentations and discussion will cover the importance of IP to various people and aspects of startup companies, including, founders, investors, inventors, engineering, product development, and marketing.
A question and answer session will follow the panel discussion, and panelists will be available afterward for responses to individual questions.
7:00 – 7:10 PM – ENET Chairperson's announcements
7:10 – 7:25 PM – eMinute Pitch - Up to 3 Startup companies’ presentations
7:25 – 8:10 PM – expert speakers on the night's topic
8:10 – 8:30 PM – Moderator and Audience Q & A with the speakers
8:30 – 9:00 PM – Networking on Zoom (meet with speakers & moderator)
(All times are USA Eastern Daylight time, webinars will not be recorded)
David Burns, Partner at McCarter & English LLP
David Burns is a Partner at McCarter & English LLP’s Boston, MA office. For over 12 years David was an Electrical Engineer at Raytheon Company. While there, he worked in the areas of signal processing, radar system integration, and the development, design, and manufacture of the principal phased array antenna for the IRIDIUM constellation of communication satellites. David has almost 20 years’ experience in patent prosecution, trademark registration, due diligence, patentability, validity, infringement, and non-infringement matters for U.S. and international clients, which include startups, emerging growth companies, and Fortune 500 companies. His practice focuses on the strategic development, protection and management of patent portfolios. David manages and has managed many patent portfolios with some having over 400 issued U.S. and international patents. Lately, his practice has focused on securing patents related to cutting edge technologies involving AI, machine learning, cybersecurity, block chain, AR, and VR. Additionally, David works in the areas of medical device technology, including syringes, on body delivery systems, automatic injection devices, optical coherence tomography devices, and imaging devices. Also, David works in areas related to optical electronics, microprocessor architecture and circuitry, electromagnetics, engine control systems, biometrics, telecommunication architectures and devices, solar cells, analog devices, and semiconductor fabrication.
David Burns on LinkedIn
J. Peter Fasse, Principal at Fish & Richardson P.C.
Peter Fasse is a Principal in the Boston office of Fish & Richardson (Fish), and has been working at Fish since 1987. Peter has two B.S. degrees from MIT, in Life Sciences and Bioelectrical Engineering. His practice emphasizes client counseling, opinion work, and patent prosecution in a wide variety of technologies, with an emphasis on healthcare, Life Sciences, medical devices, and other biomedical fields plus various green technologies. Peter helps clients from start-ups to multinationals to develop competitive worldwide patent strategies and to establish solid and defensible patent portfolios. He performs competitive patent analyses, IP due diligence to support company acquisitions, identifies third-party patent risks, and provides patentability and freedom-to-operate opinions. Peter also has experience in opposing and defending patents in U.S. litigation and post-grant proceedings and before the European Patent Office. Peter has experience in various fields including medical therapeutics, diagnostics, devices, imaging, microfluidic systems, nucleic acid sequence analysis systems and software, molecular biology, complex biomedical systems, optics, machine tools, RNAi and CRISPR therapeutics, dendritic cell- and DNA- based vaccines, liquid biopsy, engineered AAV systems, next generation sequence analysis, nanoparticle and vector-based delivery, cell culturing and bioprocessing, optics, and lasers.
J. Peter Fasse on LinkedIn
William E. Hilton, Partner at Gesmer Updegrove, LLP
Bill is a scientist at heart who concentrates on logical legal analyses. With Bill’s B.S. in electrical engineering and B.A. in computer science, Bill can speak the language of any technology entrepreneur as well as provide sharp legal advice. Bill’s clients appreciate his deep understanding of the scientific, technological and legal principles underlying their inventions, which provides them with invaluable assistance in their efforts to leverage and protect their intellectual property. Bill concentrates his practice in prosecuting electronic, electro-optic, and computer-related patent applications, along with technology licensing and trademark and copyright protection. He also provides litigation-oriented services to enforce and protect the intellectual property rights of his clients and resolve their disputes.
Bill Hilton on LinkedIN
Bob Weber, Managing Director, Patent Kinetics, LLC
Bob Weber is an intellectual property professional, inventor, serial entrepreneur, senior executive, and management consultant. Presently, he is Managing Director, Patent Kinetics, LLC, a company that helps entrepreneurs and patent owners build and monetize valuable patent portfolios. Weber is an inventor with 27 issued US patents and a number of foreign counterparts assigned to Intertrust Technologies where he served as SVP Business and Technology Strategy, 1996-1999. The Intertrust portfolio was characterized in the Wall Street Journal as a “once in a generation billion-dollar licensing opportunity.” Weber has also been a Principal Consultant at Northeast Consulting Resources, Inc. At NCRI, his consulting practice focused on strategies for information creation, access and distribution; clients included Fortune 50 companies. Weber divides his time between Silicon Valley and Boston. He served on the Advisory Board of the IEEE Boston Entrepreneurs Network (“ENET”) at various times between 2004 until June, 2019. Weber has been a member of the Silicon Valley Chapter of the Licensing Executives Society since 2010 and presently serves on the chapter’s Board of Directors and Program Committee.
Bob Weber on LinkedIn
William R. Byrnes, Esq.
Bill is an attorney and senior executive with 25+ years of experience building value by commercializing information and technology. Bill’s focus involves a unique application of his legal and business management experience on the day‐to‐day management of all elements of the product, sales, and contract life cycles as the core of the business. The effect of this focus can convert expense into value driven to the bottom line with increased shareholder value as the results.
William Mansfield, Secretary of Boston ENET
Attorney Mansfield is a patent attorney and is a lawyer in MA & NY; high bar exam scores allowed him to waive into the D.C. Circuit. He won the CALI Award for perfect grades in an IP course, and he has passed the Fundamentals of Engineering Exam covering all types of engineering. He assists clients with corporate and intellectual property law using trademarks, trade dress, copyrights, licensing, patents, trade secret protection, strategic partnerships, and succession planning. From 2004, he has worked on legal matters & he has counseled entrepreneurs/startups since 2009 thru Mansfield Law. He has worked on patent prosecution, especially business method, business process, electrical, mechanical, telecommunications, and e-commerce patents. He has filed for global IP protection and has a network of foreign IP professionals.
William Mansfield, Esq. on LinkedIN