Top 5 IP Takeaways from Former USPTO Director Dave Kappos @ NACCE 2020
The Michelson Institute for Intellectual Property had the pleasure of presenting at this year’s NACCE annual conference. Alongside us was Dave Kappos, former Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office, for a session on “Teaching Intellectual Property Rights Through Dynamic Case Studies”. Here are the top 5 takeaways from the presentation:
#1: “Keep it simple.”
When it comes to patents, entrepreneurs should refrain from setting the bar too high on whether their creations meet the standard novelty, utility and non-obviousness criteria. An invention may actually be patentable regardless of if it seems too obvious. “I’ve helped many inventors who thought their invention was unpatentable because they thought it self-evident but was extremely useful to others.” Furthermore, inventions that are likely to be independently created by others--ones that make a product “run faster, use less energy, etc.” are good reasons to seek patent protection.
Dave makes the salient point that there are many practical innovations that are “patentable and get you in the game...you don't always need a ‘moonshot’ idea" and these can be some of the best inventions. He illustrates the experience of one inventor developing a simple, practical ramp which enables the off-loading of large items at an angle. “He applied to the [USPTO] Patent Pro Bono Program and got in, was helped and secured a patent to get access to funding to start a business...all with little initial resources”. Innovation isn’t only for scientists plugging away in the lab, everyday useful products and processes often provide value as well.
#2: Registering a trademark is relatively inexpensive but not immediately required. And a copyright does not have to be registered for it to be owned.
Registering a trademark can be done for several hundred dollars, giving you nationwide coverage and protection in the event of a dispute. However, Kappos shared that the U.S. has a use-based trademark system. Meaning that in order to establish your trademark, all one needs to do is display and use it prominently along with a (™) symbol which makes it clear to the public that you own it. Some common pitfalls entrepreneurs should avoid include using the trademark as a generic term without the aforementioned symbol, making it difficult to claim in the future as well as not saving original samples of its initial use as proof.
As far as copyright is concerned, Dave gave the example of a fine art photographer client who posted their work on Instagram and had it stolen and exploited for profit. “If you post something on Instagram that doesn’t mean that you have given up your ownership of it...and it doesn’t permit others to steal your work.”
#3: “If you create a new idea and it’s not successful it doesn't matter, but if it is successful you can be sure you will be copied sooner rather than later.”
Entrepreneurs should always be aware of potential infringement, especially from markets like China. Kappos highlighted the story of a founder he met while at the USPTO: “he showed me this beautiful product and then showed me an exact copy including the trademark on the US market but sourced from China...and since he hadn’t registered a trademark it made it harder to block the [copycat competitor from selling the] product at the border”. To note, a widget market-based kind of product will have a much harder time with copyists than a more local product.
#4: There are options available for student entrepreneurs with limited resources wanting to embark on the patent process.
First off, it’s great to start out “conducting your simple patentability search” for free on the USPTO website or other free online sources like Google. Secondly, upstart entrepreneurs should look into filing a provisional patent application. There are resources available for budding student entrepreneurs to assist them along the way. The USPTO in particular has stipulations for what they designate as “micro entity inventors”. These “micro entity inventors” are eligible for a 70% discount on patent fees. Furthermore, the Patent Pro Bono Program and other organizations like the United Inventors Association work to help evaluate predatory scams involving patent and trademark applications at little or no cost.
#5: “If the invention is easy to reverse engineer, think patent."
However, if the invention is a process, you are better off maintaining it as a trade secret. Kappos points to Google’s search algorithm as an example of an innovation that is in fact not patented but kept as a trade secret due to the long duration that they have the potential to hold as opposed to patents.
We hope that these essential tidbits of intellectual property know-how can help educators and students on the road to entrepreneurship. No matter where you are in your journey, these takeaways provide a solid foundation to the basics of IP. Want to learn more? Check out free IP resources from the Michelson Institute for Intellectual Property.