Jeffrey Schox is a Registered Patent Attorney and the founding member of Schox Patent Group, a boutique patent firm devoted to building patent portfolios for cleantech, medtech, and high-tech startups. Drawing on his experience of over fourteen years in patent law and seven years in angel investing, he has written patent applications for startups that attracted investments from high profile venture capital firms, including Accel, Andreessen Horowitz, Bessemer, Founders Fund, Greylock, Kleiner Perkins, and Sequoia. As a Consulting Professor, Jeffrey teaches patent law in both the engineering school and the law school at Stanford University. Jeffrey also sits on the Advisory Board for the Center for Entrepreneurship at the University of Michigan.

1. WHAT DO STARTUPS NEED TO
KNOW ABOUT PATENT LAW?
JEFFREY SCHOX, ESQ.
SCHOX PATENT GROUP
LINKEDIN.COM/IN/JSCHOX
TWITTER.COM/JSCHOX

2. Who am I?
Professor Angel
Investor
Patent
Attorney Entrepreneur

3. Patents suck.
• Trolls will sue us
• Brad Feld is going to change patent law
• We don’t want to play the patent game

4. Patents suck.
• Trolls will sue us *
• Brad Feld is going to change patent law
• We don’t want to play the patent game
*The only factor is whether you
infringe (and have money)

5. Patents suck.
• Trolls will sue us.
• Brad Feld is going to change patent law *
• We don’t want to play the patent game
*He cannot. And neither the Supreme
Court, Congress, or the PTO will.

6. Patents suck.
• Trolls will sue us.
• Brad Feld is going to change patent law
• We don’t want to play the patent game *
*You don’t have a choice.

7. Why do startups file patents?
• enforce against a competitor
• prevent the patenting by someone else
• generate licensing revenue

8. Why do startups file patents?
• enforce against a competitor *
• prevent the patenting by someone else
• generate licensing revenue
*Takes 3-5 years to get a patent,
and costs $3-5M to enforce.

9. Why do startups file patents?
• enforce against a competitor
• prevent the patenting by someone else *
• generate licensing revenue
*Patents cost about $40K each.
Publication of your invention is free.

10. Why do startups file patents?
• enforce against a competitor
• prevent the patenting by someone else
• generate licensing revenue *
*It takes a huge effort

11. Why do startups file patents?
★ stimulate investment or acquisition
★ deter patent infringement lawsuit
★ increase leverage over a partner

12. When should startups file patents?
• pursuing both U.S. and foreign patents?
you must file before public disclosure
• pursing only U.S. patents? you can file
within one year after public disclosure*
* in March 2013, the U.S. is moving to a
“first-to-file system”

13. What is patentable?
Software Method of
using
Method of
making Hardware

14. What is patentable?
Not
Specific
Valuable
General Not
Patentable

15. What is patentable?
Invention

16. Misunderstanding Patent Law
The relationship between:
(a) the patentability of an invention, and
(b) the infringement of another patent.

17. Who can make a frosted light bulb?
Pat. No. 223, 898 Pat. No. 1,687,510
Edison Electric-lamp Pipkin Frosted bulbs

18. Misunderstanding Patent Law
Pioneering Improvement
invention invention

19. Misunderstanding Patent Law
Pioneering Improvement
invention invention

20. Who can make a frosted light bulb?
Answer: Neither Edison nor Pipkin.

21. Misunderstanding Patent Law
★An invention may be patentable if it can be
distinguished from previous inventions.
★A product may infringe an existing patent if it
contains all of the elements of a claim.
These issues are independent of each other.

22. What do investors want to hear?
★You have determined what is patentable (and
have taken steps to protect your rights).
★You have determined whether you infringe
any patent rights of your main competitors.
Again, these issues are independent!

23. How to choose a patent attorney?
Legal
Business
Tech

24. Thanks
JEFFREY SCHOX, ESQ.
SCHOX PATENT GROUP
LINKEDIN.COM/IN/JSCHOX
TWITTER.COM/JSCHOX