Apollo 50: The role of intellectual property in space commerce

The U.S. Patent and Trademark Office (USPTO) will be hosting an event to commemorate the 50th anniversary of the moon landing on July 23, 2019, from 2 pm to 4:30 pm (ET) at the USPTO headquarters, in Alexandria, VA. The event will also focus on space innovation, technology transfer from the Apollo missions, and an overview of the current administration’s policy on space exploration and space commerce.

Information regarding the event can be found here. Those interested in registering for the event, can do so here. There will be a live Facebook event here.

Trends For Women Inventors

The United States Patent and Trademark Office (USPTO) released a report on the trends and characteristics of U.S. women inventors named on U.S. patents granted from 1976 through 2016. The report delivers several important findings, including:

  • The share of patents that include at least one woman as an inventor increased from about 7 percent in the 1980s to 21 percent by 2016.
  • Even with this increase in patent counts, women inventors made up only 12 percent of all inventors on patents granted in 2016.
  • Gains in female participation in science and engineering occupations and entrepreneurship are not leading to broad increases in female inventors earning a patent.
  • Technology-intensive states, as well as those where women comprise a large percentage of the state’s overall workforce, show higher rates of women inventors.
  • Women inventors are increasingly concentrated in specific technologies, suggesting that women are specializing in areas where female predecessors have traditionally patented rather than entering into male-dominated fields.
  • Women are increasingly likely to patent on large, gender-mixed inventor teams, and are less likely than men to be an individual inventor on a granted patent.

“Women inventors have made and continue to make key contributions,” said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Laura Peter. “We look forward to working with industry, academia, and other government agencies to identify ways to increase the number of women inventors in all sectors of our economy.”

The full report can be found online at www.uspto.gov/learning-and-resources/ip-policy/economic-research/progress-potential.

What Every Startup Needs To Know: IP Pitfalls- Poorly Written Or No Agreements- Part Nine

By Debby Winters

Using poorly written agreements or no agreements at all can be a disaster for the startup. Not only is the valuation of a startup based on the IP that it owns, but also on the agreements with IP clauses. Examples are not just limited to things you typically think of as IP agreements but can include employment, consulting, funding, collaboration, settlement, licensing, research, and material transfer agreements. Thus, poorly drafted or non-existent IP-related agreements can be problematic for a startup.

Because of a lack of sufficient funding, many startups attempt to save legal expenses by using template IP-related agreements from a variety of non-professional sources, including the internet. However, such agreements can fail to include clauses that adequately protect the startup’s interest and in many cases, can include clauses that jeopardize a startup’s IP. Thus, when using IP-related agreement templates, the startups should have such agreements at the very least vetted by IP professionals. Startups can also do themselves a disservice by using an attorney who is not familiar with the nuances of IP law.

Many IP-related agreements, particularly research agreements, generally include confidentiality, publication, and IP clauses. The startup should review confidentiality and publication clauses to ensure that confidential information, including trade secret information, is protected from disclosure and that the startup has the right to review manuscripts and other materials containing confidential information before publication. With respect to the IP clauses, the startup should make sure the language allows for retaining its own IP and for protecting jointly developed IP.

Furthermore, with respect to patent license agreements involving a third-party licensor, startups need to make sure that the license agreement provides all the rights needed to commercialize the licensed technology, includes future improvements to the technology, and retains the right to sublicense the technology. The agreement should also have a sufficient termination clause in the event the startup needs to opt-out of the agreement.  The agreement should also specify the relevant field of use and possibly other fields for future expansion. Importantly, the startup should review patents to ensure that the commercialized product materials, methods, and tools are properly claimed with patent life remaining. This should be drafted and reviewed by an experienced IP attorney.

In conclusion to the series of blog posts dealing with common IP pitfalls for a startup, the process of bringing a new startup business to life and in launching new products to the marketplace can be an exciting time. However, many startups are so focused on bringing a new product or service to market that they fail to take the necessary steps to protect the associated IP. Failure to put an IP plan in place can cripple valuation and expose the startup to potential third-party infringement risk. In contrast, startups can protect and exploit their IP assets to build value and revenue by developing an IP plan as part of their conception, creating an action plan to protect IP assets including protection of confidential information, securing ownership rights to the IP, conducting freedom-to-operate searches, and ensuring properly drafted IP-related agreements are in place.

If you need help with your IP or with protecting it, let me know.

What Every Startup Needs To Know: IP Pitfalls- Failure to Identify Third-Party Rights- Part Eight

By Debby Winters

Next in this series, we will discuss the failure of the startup to recognize thrid-party rights. When we think about third-party rights in the IP, we are thinking about competitors who may have a patent for a technology within a product. Every startup should be cognizant that its company commercialization may be blocked by this type of third-party right. Accordingly, startups, at an early stage, should consider a “freedom to operate” (FTO) search or clearance to assess litigation risks. A FTO is performed to make sure that commercial products, marketing and use of the product, process or service do not infringe the IP rights of third-parties.

An FTO analysis begins by searching issued patents or pending applications and obtaining a legal opinion from a licensed patent attorney knowledgeable in that field as to whether the product, process, or service may be considered to infringe one or more patents owned by others. Patents that limit the startup’s FTO can be addressed by buying or licensing the underlying technology or patent, by cross-licensing the technology or patent, or by creatively “inventing around” the patented invention by altering the startup product or process, thus avoiding infringement.

An example of how to “invent around” would be in software development, where a startup chooses to incorporate open source software into its code. However, open source licenses also need to be carefully reviewed to ensure compliance with license terms. In some instances, the use of open source code in a startup product may transform the startup’s proprietary code into open source software resulting in public disclosure of the proprietary code. It is always best to consult a licensed patent attorney.

A startup will sometimes use third-party photographs, images, or text in marketing or product support materials. In such cases, the startup should investigate if permission is required to use the material, identify the rights needed, and contact the owner for permission or a license. Startups should make sure the copyright permission or license agreement is in writing.

Comprehensive trademark searches should be conducted early in the business planning process to make sure that the desired business, product, or service name does not conflict with a registered trademark. A startup that fails to conduct a proper trademark search risks receiving a cease and desist letter or even being sued.  This may necessity a need to rebrand after launch and incur the tangible and intangible costs associated with rebranding.

Businesses need broad awareness when hiring new employees, especially those that may have knowledge of competitor’s trade secrets. This is another way to infringe on a third-party’s IP rights.  New employee agreements should include clauses that prohibit employees from transferring or using proprietary information or materials from previous employers. The startup should also verify that the new hire is not subject to any binding non-compete agreements from former employers.

In dealing with third-party rights, startups are well-advised to consider their options at an early stage. In some cases, minor product or service changes, payment of a small licensing fee to the patent or copyright owner, and/or changing potentially problematic trademarks early on and implementing careful employee hiring practices may be sufficient to avoid future disputes and can improve a startup’s chances of attracting business partners and investors to support its business development plans.

In our next blog we will discuss the pitfalls of using poorly drafted agreements to cover IP, and the danger of not using a written agreement at all.

Quirky- such a great idea, why did they fail?

By Debby Winters

In my Feb. 9, 2015 post I talked about a company that I had been introduced to over the holidays, Quirky. It was such a great idea to provide a platform where new inventions could be sold. Today I found out that on Sept 22, 2015 Quirky filed for Chapter 11 bankruptcy protection. With this Chapter 11, the company will reorganize. It hopes to find “a new home for the Quirky community.”

For a detailed analysis of what one person thinks was the reason Quirky failed, see these explanations from Ben Einstein, a founder and partner at Bolt. Bolt is a seed stage venture capital firm that invests at the intersection of hardware and software.

Let’s hope Quirky, or something similar, can re-emerge to give inventors a platform for selling their goods.

The Keurig…Part II

By Debby Winters

It isn’t often that the day after I post a blog that I see two very relevant articles to update my blog from the day before, but that happened today.

I opened my local newspaper and saw an article entitled “Keurig coffee-pod disputes percolate.” My immediate reaction was to the title. I wished I had thought of something that clever for my blog yesterday. I went on-line to find the original Associated Press article entitled “In Battle for Coffee Pod Market, It’s Keurig v. Recyclables” by Ellen Knickmeyer. This article references the same youtube.com video and gives the same statistics that I listed in my blog. Ms. Knickmeyer says Keurig’s response to this environmental controversy is “Keurig says the fight boils down to how to make the best cup of coffee, and the company has pledged to come up with a fully recyclable pod of its own by 2020. The throw-away containers, both by Keurig and its competitors, allow coffee drinkers to get a quick cup without messy grounds.” At least Keurig is trying to make things better. And at least their main concern is making the best cup of coffee.

Well, this is the main concern for inventor Alan Adler as well! At the age of 75 he invented the AeroPress or the Aerobie. His invention is the “$30 single-serving plastic device that looks like a hand pump and, in the opinion of some of the world’s leading coffee snobs, outperforms thousand-dollar espresso machines.” Before his quest for the perfect cup of coffee, he invented and patented “a portable lamp, which had a circuit which converted three-volt battery power into high voltage to power a fluorescent bulb. But it never got into production.” He is also credited for designing and improving toys that he licensed to Wham-O, including a toy much like the slinky. That’s not the only toy he invented that I’m sure you’ve seen. He invented the Skyros that Parker Brothers sold by the millions. It is an “improved” frisbee with an open center.  If you are as much into inventor’s stories as I am, you’ll delight at reading this interview of 76 year old Alan Adler- ” The Invention of the Perfect Cup of Coffee.” There’s a picture of Adler as an extra bonus. I guess the moral of his story is- It is never too late to invent!

 

The Keurig…good invention or bad invention?

By Debby Winters

Keurig has been in the news a lot lately.  First there was the news of Coca Cola buying a stake in Keurig Green Mountain so they could make do-it yourself Coke to challenge the popularity of Sodastream’s soda making device.  Remember the reports that the inventor of the Keurig machine said he doesn’t own one and he regrets inventing it? John Sylvan, who sold his interest for a mere $50,000 to Green Mountain, which should have paid Sylvan a lot more, says not only are the cups bad for the environment, but the replacement cups are expensive, costing as much as $40 per lb, and that “it’s not like drip coffee is tough to make.”

For those interested, Keurig’s patent on the original K-Cup (US5325765) expired in September 2012. Keurig holds at least one additional US patent (US6645537) detailing improvements that have subsequently been incorporated in their K-Cup design. There are additional stories surrounding competition and licensing of these products but that’s for another post. And then there are the other similar systems, like Nespresso, with its own triumphs and failures. Again, another post.

Now, on with the Keurig story. Then came “Kill the Kcup” trying to kill the k-cup because the k-cups were killing the planet. In the video they say that the K-cup has “reached unparalleled levels. Output became so high that there was enough discarded K-Cups to circle the earth 10.5 times.” The 2 minute video shows the K-cup invading and taking over the planet. The following statistics are listed:

Know your facts:

1. In 2013, Green Mountain Coffee produced enough coffee pods to wrap around the equator 10.5 times.
2. The new Keurig 2.0 does not offer reusable filters and the existing “my K-cup” filter does not fit on the machine.
3. Green Mountain only makes 5% of its current cups out of recyclable plastic.
4. Keurig Green Mountain’s mission is to have a Keurig System on every counter and a beverage for every occasion – hot, cold, maybe even soup.
5. The pods are made of No. 7 plastic, which can’t be recycled in most places. They have an aluminum lid, which is hard to separate from the cup. Even if the plastic, aluminum and coffee could be separated, the pod is too small to be handled by most recycling systems.
6. TerraCycle, a company that provides recycling solutions for spent coffee pods, has teamed up with Tassimo, Mars Drinks, Nespresso and Illy, but despite reaching out to the company multiples times, has not be able to develop a relationship with Green Mountain (Keurig).

Sounds alarming, I know!

A couple of good things that have come out of this controversy over the K-cup are that it has gotten people to discuss the best ways to make coffee and how the Keurig business model has affected the business world. Is a French Press really the best and easiest way to make coffee? You decide. Is the Keurig business model outselling the old “razors and blades” business model pioneered by Gillette? Interesting. I’m looking forward to the next installment of news surrounding the K-cup.