TOMORROW night, on Tuesday February 2, 2016 at 630pm, the Boston Entrepreneurs’ Network (ENET) will present a panel of four (4) speakers on this subject at the group’s Waltham location: Constant Contact, 1601 Trapelo Rd., 1st Floor, InnoLoft, Waltham, Massachusetts (Exit 28, I-95/Route 128).
Entrepreneurs and investors are increasingly viewing patents with some skepticism. Some Investors say that they are unwilling to fund building out a strong patent portfolio because if the business is successful, they can buy whatever patents they need. They would rather their early investments be devoted to building and launching the minimum viable product, gaining customers, and ramping revenue. Facebook is one example they point to. Other investors say that they will not invest in a startup that does not have the potential to create a significant patent portfolio that can serve as a barrier to future competitors and, should the startup fail, provide some value at the end. Google is often cited as an example of a company that had patents early and has built a healthy portfolio. All these conversations are taking place against a backdrop of diminishing patent value generally, and particularly the value of software, payment, and business methods patents. Some of these changes result from various court decisions. Other changes have been brought by the American Invents Act (AIA); these changes make it much more difficult to enforce patents of all kinds in the US. A new administrative procedure called Inter Partes Review (IPR) makes it very cost effective to challenge most issued patents at the US Patent and Trademark Office. So what is an entrepreneur to think and do? Tonight’s panel of experts will address these and many other issues from both the business and legal perspectives.
Stephen Y. Chow, Esq., Partner, Burns & Levinson, LLP
Over three decades of practice, Attorney Stephen Y. Chow has developed numerous patent portfolios and strategies for chemical, electrical, information technology and life sciences enterprises, litigated patent, copyright, trademark, trade secret, antitrust, unfair competition, international trade, telecommunications and e-commerce cases before state and federal courts and agencies. Mr. Chow has coordinated or served as an expert in litigation before foreign tribunals. He has also advised manufacturers, telecommunications carriers, commercial exchanges and educational, financial and research institutions on commercial, legislative and regulatory matters, particularly in internal policies and development of new services and products, as well as in early-stage financing. Mr. Chow sees himself as a strategist and trouble-shooter for technology companies in financial, governance and intellectual property disputes and development. In particular, he offers integrated patent, technology and business prosecution, assessment and enforcement with the commensurate benefits.
Rob Friedman, Entrepreneur, CEO, and Board Member
Rob Friedman has more than 35 years of senior operating management and consulting experience and has launched several successful venture backed companies with IP. He was cofounder and CEO of Bitstream (BITS, 1981-91); President of Electronics for Imaging (EFII, 1991-92); Chairman of Ares Software (which was sold to Adobe Systems (ADBE, 1993-96) and Softwatch Ltd (1998-2003). BITS, EFII and Ares were all companies with innovative and proprietary software technology as well as patented technology in the electronic and desktop publishing industries. Softwatch was a developer of software to create targeted healthcare Web sites to support global pharmaceutical brand marketing and had no patents.
Nikhil Patel, Esq., Of Counsel, Lathrop & Gage, LLP
Nikhil Patel is a patent attorney and Of Counsel with the Boston office of Lathrop & Gage, focusing on patent prosecution, litigation, and client counseling, guiding engineering companies and universities through the development, management, protection, and enforcement of intellectual property rights. Practicing for nearly a decade, Nikhil has extensive experience in the technology industry, with an emphasis on electronics, computer science, communications, physical science, medical, and various engineering fields. Nikhil also has strong ties with the venture capital and private equity community of Boston. As a director of a venture capital firm that invests in companies optimizing the use radio frequency spectrum in wireless networks worldwide, Nikhil develops strategic IP assets for portfolio companies to facilitate large exit valuations. Nikhil further serves as an advisor for a private equity firm that acquired over $300M of spectrum licenses in the most lucrative FCC spectrum auction to date. As a serial entrepreneur, Nikhil is also familiar with the challenges faced by startups in developing business plans, attracting investment, and developing robust intellectual property positions. As CTO of a wireless startup, he was integral in developing and securing IP protection for ground breaking wireless filtration technologies.
Bob Weber, Managing Director, Patent Kinetics, LLC
Robert Weber is a successful intellectual property professional, inventor, serial entrepreneur, management consultant, and senior executive. 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 28 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. (Intertrust is presently a joint venture of Sony and Philips.) Most recently, Patent Kinetics and its legal team successfully resolved a patent and trademark case brought on behalf of the inventor and trademark owner. Weber divides his time between Boston and Silicon Valley. He is a former Vice Chair, Programs, of the Boston Entrepreneurs Network and is a member of the Licensing Executives Society, the Silicon Valley Forum, and the MIT Enterprise Forum of Cambridge where he serves on the ConnectedThings2016 organizing committee.
Moderator: William R. Byrnes (email@example.com).
Bill is an attorney and senior executive experienced in assisting entrepreneurs with the legal and business management issues arising on a day-to-day basis in the product, sales, and contract life cycles involving customers, vendors, and other third party relationships.
Bill received his undergraduate degree in English Literature and Creative Writing from Boston University, a J.D. from Suffolk University Law School, and a L.L.M. degree in Taxation from Boston University Law School, Graduate Tax Program. He is also a Boston Entrepreneurs’ Network board member.
Hopefully, these presentations on patents and the business proposition of intellectual property will be helpful to entrepreneurs in small and early stage companies I represent. Hope to see you at ENET’s Waltham meeting place, Constant Contact tomorrow night at 630pm!
I helped Bill Byrnes recruit one of the attorney speakers for this event.
In addition, on May 8, 2014, I gave a presentation for the 128 Innovation Capital Group, also at Constant Contact, in Waltham, MA, on a very similar subject – “Value of Intellectual Property in Securing Funding: how to obtain it and what value it has for your company”.
During my presentation as the opening speaker, I focused on three important areas of intellectual property that can have great value to a company but can also be cost effective to a cash-strapped startup.
Those three areas of my main focus were –
- Trade Secrets
This area of IP enables a company to protect any advantage that it may have in business, whether a “secret sauces”, or customer list or financial records. The key need is that secret be protected internally and externally by means of confidentiality agreements.
This protects works of the company or its employees from copying and piracy by others. These works can be literary, brochures and product descriptions, they can also be art work or musical competition. It can also be computer programs. For additional Federal protection, filing with the US Copyright office is necessary, ideally before publication.
This protects the good will of a company, its brand name or the brand name of products or services marketed from those who would try to use for their own benefit the trade name you’ve developed. Here again, there are common law rights to a trademark but greater rights obtain with a Federal filing with the US PTO.
Each of these three key areas of IP protection can be obtained and value built in your company at relatively low cost. I then began the discussion of the most costly but especially in life sciences, the most important area of value in IP…
These are used to protect the ideas involved in novel scientific inventions. These are the most costly protections and also require public disclosure of the invention. I suggested in my remarks that because of their cost, it is often best to approach patents in stages. 1st – conduct a novelty search of the current state of the art to assure there is a reasonable chance that your invention is sufficiently novel to be able to obtain protection, 2nd – File for a provisional patent that establishes your priority and protection for one year. 3rd – undertake efforts at commercialization, and then complete the patent process by converting your provisional into a full utility patent within the 12 months if there is sufficient commercial promise. I noted that about 95% of issued patents are never commercialized, so it is useful to test the market first before spending all the money to complete the process. Other speakers that morning further covered the subject of patents.
All three speakers at the May 2014 meeting of 128 ICG concluded that in the case of biotech and life sciences companies where the novel scientific invention is critical to the company’s survival and growth, patents are a necessity, but in software, e-commerce and service business, the three areas of IP law the subject of my discussion were of potentially far greater value to companies seeking funding.
For more information on the Copyright portion of my 128 ICG presentation in May 2014, see these slides from an earlier presentation I gave for another group (MDG – Medical Development Group). LINK: https://robadelson.wordpress.com/2012/07/30/using-copyrights-to-protect-your-software-literary-and-artistic-works/
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I remain active in ENET, a Waltham and Cambridge based group that aids founders, entrepreneurs, small and early stage companies, and people who invest or work in those companies. I have been on the ENET Board since 2002, and served as Chairman since 2009, re-elected in May 2015 to my fourth 2-year term as ENET Chair. During the period of my leadership, ENET’s annual program has grown from 10 meetings per year to 19 planned for 2015-16: 10 meetings in Waltham, and 9 in Kendall Square Cambridge, plus our annual cruise of Boston Harbor to end the program year. Each meeting has three or more speakers on a subject of interest to entrepreneurs and company founders, in life science, tech and other areas of New England’s innovation economy.
A month ago, on January 5, 2016, I was meeting organizer and moderator for the ENET meeting on “ Product Development in Life Science & Tech Startups.” We had four wonderful and quite complimentary speakers, a full house in Waltham, with 112 in attendance, and great audience questions. We began with the big picture of product development across life science fields and then focused on a single company’s successful development, launching and sales of a customer-driven medical device / consumer product. Then moving to tech, our third speaker focused on key design issues and our 4th speaker closed on scaling and production issues. To see my write up on the meeting and slides from each of our four ENET speakers, go to http://www.boston-enet.org/event-2017595
January 5, 2016 ENET Speakers (in the order they presented):
Richard Gill, PhD, Board Director and Investor, Launchpad Venture Group (http://launchpadventuregroup.com/ ) Dr. Gill is a seasoned entrepreneur, CEO, investor, and board member. He is a longtime investor and director at Launchpad Venture Group, the largest angel investing group in the Northeast. Dr. Gill is active on the board of several startups. Dr. Gill’s most recent operational role was President & CEO of TruTouchTechnologies, an alcohol testing and biometric device company, where he remains a board member.
Molly Farison, Co-founder and CEO at Lilypad Scales (www.lilypadscales.com), is an experienced electrical engineer and product developer with significant product development history. She has experience in consumer and healthcare markets working with factories in the U.S. from starting her present company, Lilypad Scales, which developed from scratch a functional and durable product with 5-star reviews on Amazon.com. Molly also led two capital raises and gave presentations that landed her company a spot in MassChallenge in 2013 and won the Babson BETA Challenge ($20k prize) in 2014.
Steve Owens, founder of Finish Line PDS (www.finishlinepds.com) has over 30 years of successful product development experience in many different industries and is a sought-after adviser and speaker on the subject. Steve has founded four successful start-ups and holds more than twenty-five patents. Steve has worked for companies such as Halliburton and Baker Hughes. He has experience in the Internet of Things, M2M, oil and gas, and industrial controls.
Kevin Winter, Sales Engineer/Programs Manager at Kalow Technologies (www.kalowtech.com) Kevin Winter, is enjoying his 4th year as Sales Engineer/Programs Manager at Kalow Technologies (www.kalowtech.com), using his manufacturing and product experience to help customers (i.e. for small startup companies in New England and large worldwide corporations) convert their ideas into productive, profitable offerings. Kalow is an Electro-mechanical Contract Manufacturer located in lower state Vermont. Kevin started his professional experience by joining GE, right out of college, and was with them for 18 years.
Besides the January 5 ENET meeting, I have also organized and moderated two earlier meetings in the current 2015-2016 program year that began in September 2015.
On October 6, 2015, I was meeting organizer and moderator for the ENET meeting on “Innovative Ways to Bootstrap Your Startup Company.” We had three great speakers, a full house in Waltham and great audience questions. To see my write up on the meeting and slides from each of our three ENET speakers, go to http://boston-enet.org/event-2017582
One of the highlights of the October 6 ENET meeting was the presentation of Joanne Lang, Founder and CEO of AboutOne, www.aboutone.com/about/our-story/ Joanne is based in Philadelphia and flew in special, at her own cost, to give her presentation for ENET. Joanne’s slides, “”Bring Your Product to Market Bootstrapped Style… and Keep it there” – were also excellent, a great and continuing resource for founders and entrepreneurs to use and reference, LINK http://boston-enet.org/resources/Documents/Presentation_Lang.pdf Speakers:
On September 1, 2015, I was meeting organizer and moderator for the kick-off meeting to ENET’s 25th year. For that meeting in Waltham, our subject was “Giants of the Startup Community, Founders who made it Big, tell what’s Important”. It was a great evening for ENET where our founders of startup companies heard stories of entrepreneurial challenges, surprises, disappointments, victories and triumphs.
To see slides from the September 1 ENET event, go to – http://boston-enet.org/event-2005499
I also arranged ENET’s last meeting of the 2014-2015 program year, our annual Sunset Networking Cruise of Boston Harbor on July 16, 2015. This cruise, our “EntrepreneurShip 2015” was also be joined by our partners MDG – Medical Development Group, IEEE Women In Engineering (WIE) and the EntreTech Forum. This was the 13th ENET summer networking cruise that I’ve arranged. 151 attended on a lovely evening with good food and company and great views of the sights of Boston Harbor and even Boston Light at the outer edge of the Harbor.
Also during the now ending 2014 – 2015 ENET program year, I organized and moderated three ENET meetings.
- April 21, 2015 – Building and Using Board of Directors and Boards of Advisors , that featured Jack Derby, Jean Hammond and Travis Conners (substitute for Jay Habegger who was called away on a family matter).
- February 3, 2015 – Founder Agreements and Stock Vesting – Building a Team, Protecting yourself, Managing expectations, , that featured Kartik Shah, Gail Hoffman, and me as third speaker (to substitute for Harry Glorikian who was called away for last minute Board meeting), with my co-organizer Stacey Arbetter as moderator.
- September 2, 2014 – “Entrepreneur Success Stories”, which featured successful entrepreneurs from different fields – high tech, consumer and life sciences. The three presentations for this 2014-2015 kickoff meeting were taped and you can view the tapes if you wish on the links below.
Additionally, in prior years, I’ve moderated and/or spoken at a number of ENET panel presentations, including presentations on the following subjects:
- “Raising Money from CrowdFunding” , May 2014 (moderator),
- ““Co-Founders and Core Team – finding them, protecting yourself, managing expectations”. February 2014 (moderator & speaker)
- “Ready, Set, Launch. Knowing when you’re ready & How to start a company” , September 2013 (moderator),
- “Online Finance and Crowd Funding” , April 2013 (moderator),
- “Bootstrapping 101: Alternative Ways to fund a Startup without an Angel or VC”, November 2012 (moderator)
- “Seed and Angel Financing” , October 2012 (moderator),
- “Getting Stuff for Free”, April 2012 (moderator),
- “Transforming Your Idea into a Successful Company”, September 2011 (speaker and moderator),
- “Get Going! Launching a Successful Business”, September 2010 (moderator),
- “Licensing Technology”, February 2010 (moderator),
- How to Select and Retain Management for your Startup Company”, February 8, 2008 (speaker and moderator)
- “Getting Initial Money to go from Nothing to Something”, October 2007 (speaker and moderator)
- “Strategic Alliances and Partnerships: to build, finance, and develop early stage companies”, November 2006 (speaker and moderator)
- “Building Boards of Advisors and Boards of Directors”, March 2006 (moderator)
- “Protecting Your Intellectual Property”, January 2006 (speaker)