Patent Remedies and Why to Patent | IP series 4 of 62



Intellectual Property for Start Ups

This series of videos, designed to assist entrepreneurs during their start up period, covers over 60 topics, including patents, copyrights and trademarks. The videos were designed to help guide start-ups through the important basic concepts of intellectual property.

About the Professor:
Professor Bryce C. Pilz (http://www.law.umich.edu/FacultyBio/P…) is a Clinical Assistant Professor of Law in the Entrepreneurship Clinic (http://www.law.umich.edu/clinical/ent…) at the University of Michigan who represents tech start-ups concerning intellectual property, incorporation, and financing matters. Prior to joining the Law School, Pilz practiced at Kirkland & Ellis LLP in the firm’s intellectual property practice and clerked for Judge Amy J. St. Eve in the Northern District of Illinois. Most recently, he served as Associate General Counsel at the University of Michigan, where he worked with the Office of Technology Transfer on start-ups and licensing.

Pilz was part of a team that spun-out more than 60 tech start-ups and entered into more than 500 technology licenses over a five-year period. Pilz also assisted in the creation of the University’s Venture Accelerator at the North Campus Research Complex and advised the Center for Entrepreneurship on student entrepreneurship matters. Prof. Pilz has also served as a National Science Foundation I-Corps mentor and teaches in the University’s Master of Entrepreneurship program.

CFE: http://www.cfe.umich.edu/
I-Corps: http://www.cfe.umich.edu/innovation-corps
Masters of Entrepreneurship: http://entrepreneurship.umich.edu/

How to use these resource videos:
The outline below will help you identify the topic/video most important to you.

I. INTRODUCTION

1 • Overview of start-up intellectual property issues
2 • Overview of categories of intellectual property

II. PATENTS

A. An Overview of Patent Rights

3 • Overview of patent system
4 • Patent remedies and why to patent
5 • Anatomy of a patent
6 • What are patent rights?
7 • Patent term — How long does a patent last?

B. What Can Be Patented?

8 • Patentability and eligibility overview
9 • Patent eligibility — What inventions are eligible for patent protection
10 • Patentability: Novelty
11 • What is Prior Art
12 • Patentability: Obviousness
13 • Patentability: Written description and enablement
14 • Public Disclosure Issues

C. Obtaining a Patent

15 • Patent application process
16 • Provisional patent applications
17 • Selecting a patent attorney
18 • International patent protection
19 • Continuation patents
20 • Invention reporting: mining for inventions

D. Patent Inventorship and Ownership

21 • Patent inventorship
22 • Joint inventorship
23 • joint ownership
24 • Patent ownership
25 • Patent licensing
26 • University tech transfer
27 • Past employment issues

E. Design Patents

28 • Overview of design patents

F. Patent Infringement and Litigation

29 • Enforcing patent rights
30 • Freedom to operate
31 • Claim construction and claim charts
32 • Designing around the patent of another
33 • Defending against patent assertion
34 • Willfulness
35 • Invalidating third party patents
36 • Retaining patent litigation counsel

III. COPYRIGHT

A. What copyright protects

37 • Copyright Overview
38 • Idea/Expression
39 • Copyright registration
40 • User interface issues
41 • Software: patents v. copyrights

B. Copyright ownership

42 • Works for hire
43 • Joint authorship
44 • Authorship compared to patent inventorship

C. Avoiding copyright infringement

45 • Fair use
46 • Open source software
47 • Reverse engineering
48 • User generated content and DMCA take downs

IV. TRADEMARKS

A. Obtaining trademark protection

49 • Trademark overview
50 • Trademark registration
51 • Distinctiveness: selecting a strong name

B. Clearing your company or product name

52 • Performing an initial trademark clearance
53 • Likelihood of confusion

C. Using trademarks of others

54 • Nominal and fair use
55 • Intermediate trademark uses

V. TRADE SECRETS

A. Protecting your trade secrets

56 • Overview of trade secrets
57 • Trade secret policies
58 • Enforcing trade secrets
59 • Disclosing secrets under nondisclosure agreements

B. Avoiding infringing others’ trade secrets

60 • Hiring personnel
61 • Non-compete agreements
62 • Obtaining information pursuant to nondisclosure agreements




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