Monthly Archives: March 2014

CrowdingFunding IP

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Crowd, Prior Art

Using the Crowd to Find Prior Art

The USPTO put out a press release this week requesting participants to attend its Roundtable on Crowdsourcing Access to Prior Art at the USPTO offices in Alexandria, Virginia on April 10th.  If you want the nitty, gritty details, click here.

As far I can tell, the point of this little shindig is for patent examiners to be able to talk to real IP people about the process of finding prior art in the creation of the patent submitted to the USPTO.  The press release states that not only will attendees be able learn about crowdfunding prior art resources and legalities of using them in third-party pre-issuance submissions to examiners, they’ll also gain insight so as to make better submissions.

Initially, it seemed to me that this “roundtable” is really just training session for examiners to get up to speed on the current crowdfunding environment and is not what I would call a investor friendly event.  I mean, the press release pretty much says that the primary purpose is for examiners to have an opportunity “It will also help the USPTO update its guidance and training for patent examiners to help them more effectively use crowd-sourced prior art.”

So how can the USPTO make this process more friendly to inventors and attorneys and agents who won’t be anywhere near Alexandria, Virginia on April 10th?  I posed this question (and others)  to Jack Harvey, the Director of Technology at the USPTO. Here’s the just of the exchange:

TJ: Why is the USPTO hosting this Roundtable on Crowdfunding Prior Art?

JH: Under the new America Invents Act section 35USC  1.122E requires that the USPTO be able to receive submissions from third-parties.  This roundtable is an extension of a pilot project called Peer to Patent that the USPTO ran off and on with the NY School of Law from 2007 to 2011, whereby, using a web interface, individuals of the public could submit applications of prior art to the USPTO so as to help examiners find additional prior art that was not available in their existing resources or databases. 

Since the AIA became law (about 18 months ago), the USPTO has collected over 1,200 submissions of prior art from the general public, but they USPTO has had no formal way of managing these submissions and how they will be handled internally and the USPTO is looking at more formal crowdfunding ways to organize and sort through this prior art for its own internal use in ways similar to StackExchange’s AskPatents.com operates.

TJ: Who do you expect to attend this roundtable?

JH: We expect that we will have patent practitioners, corporations that are involved in crowdsourcing, and other interested internet and inventor companies in attendance.

TJ: What about patent examiners?

JH: We have over 6,000 examiners here on staff in Alexandria so we’re limiting the number of examiners that can attend this roundtable.  It’s most likely that those in more senior or supervisory capacity will be in attendance, if anything.

TJ: How do you see crowdsourcing access for prior art to take place?
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JH:  It’s too early to tell how we’ll implement suggestions for using the general public to identify prior art.  We don’t really know what technologies will be used or what the process will look like.  That’s part of the reason for the roundtable.

TJ: Who is going to be speaking at this event?

JH: At present we know that someone from StackExchange will be speaking but are not exactly sure who.  Also Micah Siegel is scheduled to attend at this time.

TJ: How is this roundtable discussion being made available to those who can’t physically attend the event?

JH:  After you sign up for the event you’ll be given a Webex registration link so that you can watch the live feed in real time.  While you can’t ask direct questions if you ask questions in the webex chat box, myself or someone from the USPTO staff will endeavour to get the questions answered in real-time.

Also you can make comments to the roundtable until April 25th by responding to this notice.

Our View: 

As mentioned by Professor Dennis Crouch and Jason Rantanen in their September 19, 2012 blog post (here), the managers at the USPTO are struggling with comply with 35USC1.122E as to how to allow for the public to have an active role in the pre-issuance/submission process.   It seems that the USPTO is hoping that by engaging IP practitioners as to how to collect and assemble prior art from more than its existing databases, it can improve the issuance and pre-submission processes.

When I asked Jack about where such prior art that the USPTO doesn’t have in one of its extensive databased he gave me three interesting examples: a university archive that hadn’t been digitized and made available, a state document that wasn’t in the federal registry or a thesis or research paper that was published by an academic institution that hadn’t been made its way yet into any formal database.

Will Crowdfunding of Prior Art work?  I’m not sure, but I think that harnessing the power of more than just their existing resources can only be beneficial, I am just concerned that by having more data available from crowdfunded resources examiners take more time to issue their decisions because they will have more data to review in a less searchable format.  And that’s the last thing practitioners and inventors need… longer waiting times.

 

 

Trademark your Domain Name?

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Until recently your website’s Top Level Domain or TLD was unable to be given a trademark or copyright by the US Patent and Trademark Office (USPTO) for very technical reasons.  This meant that if you had a TLD that ended with .com, .org, .net or other prominent TLDs from ICANN that you couldn’t protect your domain name from duplication using other TLDs.

With the introduction of potentially hundreds of new TLDs called generic TLDs (or gTLDs) in the ensuing months, the USPTO has recently issued guidance as to when your TLD could be eligible for a copyright or trademark.  While you can read the entire document here, our summary might be easier on your time.

In order for you to be able to register your existing or new gTLD or TLD, you’ll need to provide the USPTO with evidence of the following:

1, Your gTLD will be a “Source Identifier”

What’s that? According to Digimind a source identifier is an agent that keeps you updated on the new sources that need to be tracked.  Meaning that so long as your gTLD can be considered something that can be tracked or found as a source of information you’ve met this criteria.

2. Prior Registration of your Business Name as a Trademark or Copyright

You should have already registered your operating business name under that is extended by the .com, .org or .net etc. with the USPTO for a potential trademark or copyright.  If you haven’t yet registered your company name with the USPTO for a trademark or copyright, then it’s unlikely you’ll be able to register you domain name for a trademark or copyright before then.

3. Provide Proof that your gTLD will be perceived as a Trademark

According to the USPTO “Because consumers are so highly conditioned and may be predisposed to view gTLDs as non-source indicating, the applicant must show that consumers already will be so familiar with the wording as a mark that they will transfer the source recognition even to the domain-name registry operator and registrar services. ”

Marketing or advertising material that specifically advertises the gTLD address should be submitted as should data relating to the amount of time and money you spent on such advertising campaigns.

4. Have a Registry Agreement with ICANN

Just because you’ve registered a domain through your names provider (like godaddy.com or netfirms.com) doesn’t necessarily mean that you have an agreement with ICANN.  Moreover, as the trademark/copyright applicant you need to be the person/entity that is named as the registrant of the domain name.  So if you operate a site, then you can only the be person who, by ICANN, is registered as the domain owner, if your company is the operator, then it must be the registrant.  This “chain of title” issue will become more difficult if you have purchased sites and the registration has not been properly transferred to you by ICANN or if you have used a registration agent in the past.

5. Provide a Legitimate Service for the Benefit of Others

According to the US Trademark Act in order for a service to be considered legitimate, it must primarily benefit someone other than the applicant (owner).  So this means that as the registered domain operator you’ll need to provide evidence that the use of the domain is for the benefit of others including:

  • that you intend to use the gTLD as a trademark
  • describe how the gTLD will target industries or consumers
  • describe if other gTLD’s will be registered and used under the same trademark (i.e. .bus, .fin, .xxx, .info, etc.)

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So what wouldn’t quality for a Trademark or Copyright?

Domain names that were used for internal purposes would not qualify.  So a company intranet domain name could not receive a trademark or copyright.   But a domain name used as portal for external suppliers or affiliates could receive a trademark or copyright.

Our final thoughts…

With the creation of ICANN’s hundreds of new gTLDs, securing your main domain personification and brand development will become even more important for all sorts of entities.  This does not necessarily mean that you should go out and buy all the potential domain names available (a common parking strategy), but instead could choose, in the US at least, to trademark or copyright your main brand name and its associated gTLDs.  Before engaging in such a strategy you should, of course, check with your local patent and trademark agent to ensure that you meet all the criteria mentioned above (don’t know one… send me a note and I’ll make an intro).

Allowing you to create trademarks and copyrights of your TLDs will strengthen your Intellectual Property Assets and increase their overall value as the rights enured from these marks allow their owners to provide for broad enforcement actions.  We think that the USPTO is on the right track with this process and believe that the benefits far outweigh the costs for both online and offline companies.

 

What’s that Worth?

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As I’ve been making the rounds to various connections discussing the new direction that we’ve taken with our business, I get asked the question, why would I pay for a valuation analysis or report when I can do one myself or my investment consultant/bank will do one for me?  So here’s the short answer: because you won’t know what it’s really worth.

I’m not making a self-ingratiating pitch for my services when I say this, I really mean it.  If you or your investment consultant/banker try to pitch the value of your business to a potential purchaser or investor, they’re going to most likely ignore the work and create their own estimate of value.  I know.. I’ve been that Investor.

While on the buy-side, I recall a case where a family had hired a credible independent consultant to assist them with their extraction of the division that they started from their troubled parent.  Not only did this consultant put together a proper financial package (including a proper DCF model), he completed a valuation and transaction structure that made sense.  My colleague who worked on the deal with me felt that it was the best transaction we had seen all year (and we had seen hundreds by this time).  We didn’t have to go digging for all the problems or challenges with the transaction because they were described to us in the consultant’s valuation report (we of course verified the details).   Our investment committee passed on this deal (arrgghh!), but I ran into the CEO a few years ago and he told me that he got his deal done, the way he wanted and was extremely happy with the transaction and the performance of this consultant.

While it’s true that you and your team have a better sense as to what your business is really worth than anyone, this is not the true fair market value, it’s what we call value-to-owner.   

As for your investment banker, well what can I say, they’re certainly in a better position to expose the fair market value but in most cases, they are paid on the successful completion of a transaction and could be considered biased by whomever you’re seeking funds from.  And frankly, the work I have found from most sell-side investment firms is lacking in depth and clarity.

Here’s something else that I learned from my 109 year old grandfather… you get what you pay for.  So if you’re doing your valuation internally, the output is only as good as your team (which I’m sure is awesome) and if you’re relying on an Ibanker or consultant, who is paid on contingency, then the numbers are harder for skeptical investors to believe.

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A lot of the VCs and PE Investors with whom I keep in touch routinely talk about how their primary criteria for their initial investment are 1) Quality/Credibility of the Management Team and 2) Quality of Assets.  The quality of the market opportunity is a distant third; most of these successful and sophisticated investors know that it takes the Intellectual Property and the smarts of a good team to create long term value.  That’s what they’re really betting on, not a specific product or market opportunity.

So why not have someone take a look at this?  I know, you don’t want to spend any dough.  I get it, I’ve been there.  But you know what? If you’re serious about that transaction or capital raise, you’ll have a lot more credibility to have a proper calculation or opinion of value completed by a competent, independent, third-party.  The actual cost is significantly less than the amount of the capital raise or transaction and can be used for multiple purposes (if you request such).  Oh unless you’re a large multi-national conglomerate, then the cost is certainly less than those success or placement fees you’ll be soon paying.

If you’re dead serious about growing your business with smart money or getting out altogether… the value of an independent assessment of business’ value is worth way more than the actual cost, it gives you a basis to begin negotiations and shows investors that you’re serious about completing this deal.

Don’t believe me?  Go raise your capital or complete your buy-out without an independent valuation and then next time call me, I’ll do the valuation and when you get better terms as result we can talk about how you’ll pay.