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Ask HN: How do you protect IP in a coworking space?

4 points by Killah911 13y ago

Just heard a presentation from an IP lawyer who basically said that due to some recent changes in the law, if one were to do a "public demonstration" of their IP then they can no longer file a patent for it. So, if you invented a spark plug and put it in your car and took it for a test drive down the freeway without filing a patent first, you can kiss it goodbye. The crummy thing about that is if you're working on code and you happen to be working in a coworking space building and running said code, you're essentially on the same boat. This would apply to coffee shops and other pseudo public places as well. If that is the case, how do you manage IP? Don't co-work?

rabarbers 13y ago
I work at home. I rarely use coworking space, but if I use, I do not exchange ideas with others in public space. One more aspect: I live in Europe, but fill US patent applications (because I can't afford EU patenting process. In my oppinion EU is not friendly for inventors.), so even if there will be some information leak, still idea will not be introduced in US market.
- Killah911 13y ago
  I've been to and worked out of Si Valley for a while and I think part of the magic of the place is the non-secrecy & collaborative environment in which the techies seem to be in. So, I'm not in the "don't share ideas" school. My question was related to the patent system specifically in the US. So the troubling part is, technically if you go to a coworking space or a coffee shop for an hour a month and happen to work on your code there or compile your code there, you can't file a patent since your work in now "public". Previously there was a one year grace period, but the lawyer informed us that new changes to the Patent Law means that grace period no longer exists.
liamgooding 13y ago
Why would you want to file patents on a software startup anyway? Whatever you think you've invented, 9 teenagers are right now, independently making the same thing. Patents in software startups are a waste of money and a huge distraction. In the UK there will soon be tax breaks, but you need to make a profit to worry about those p.s. if you have a hardware product that genuinely is a good fit for a patent, get out of the coworking space. Try maker spaces that are more suited and will have better processes in place to handle this
- rabarbers 13y ago
  Seems there is possible misunderstanding of "software" definition. Any software written for modern processors are interpreted as some binary code... so it is one astronomical number. Probably there are even more than 9 teenagers "looking for their lucky numbers", but that is not what inventors are trying to patent :D. Look at what large corporations are working on and You will see the picture of what can be patented and what inventions will be valuable in near future. But that is grown-ups field, not teenagers, who can't imagine software startup inventing inventions that could be valuable to others ;).
- shawnreilly 13y ago
  There are a few different reasons someone might want a software patent at a startup stage. Investors view Patents as an Asset, which can increase your value in their eyes. Legally, they can be leveraged (once granted) to protect a particularly novel idea and minimize competition. They can also be used defensively, protecting you from being sued. They can also be licensed, which means you could potentially generate income. How much value they have, or if the system works properly is a different conversation entirely. My own personal stance, I'm interested in patents for defensive measures only. Meaning, if someone else tries to sue me over something I created (saying they created it), I have something on my side to protect me.
- Killah911 13y ago
  I agree with your sentiment. IMHO, being first to market is more important, and the attorney who did the presentation also mentioned that all IP aside, getting something done and being far ahead of the competition is a strategy that he sees many successful clients take. However, he recommended both getting a patent and being first to market. And as much as I might not care, and be of the opinion that patents are broken system which I won't mess with. It is not the case for everyone. I am helping to organize a co-working/incubator space in my local community and if it is indeed true that you can't file a patent once you've used the co-working space to work out of, then the potential members should at least be ware. I'm hoping other HNers have experience on this and may have a better answer than not participating in a co-working space.
shawnreilly 13y ago
I should start by stating that I am not a Patent Attorney and you should always get legal advice from an actual Attorney. I'm just an Entrepreneur that does not want to pay Attorney fee's and does it all himself (with no legal background). From my understanding, the recent change in the patent system (March '13) related to the 'First-to-file' modification, which generally means (assuming two inventors invent the same thing at the same time), the first to file will be granted the patent. This is a change from the first to invent approach, which basically meant whoever could prove they built it first was granted the patent. From my perspective, this just means that you have to take the paperwork aspect of patents a little more seriously, and integrate it into your process at an earlier stage. I did not watch this presentation, so I'm not really sure what that IP lawyer was talking about. But it sounds like it has something to do with Prior Art. The generalized concept here is that putting information into the public domain makes it "known", which would then imply that it is no longer novel. This information would then become Prior Art, which in some cases could invalidate the invention from being patentable. The important thing to consider here is the documentation or record of who put the information into the public domain. If the inventor put the information into the public domain, then it would belong to the inventor, and thus considered a Publication instead of Prior Art. If someone else put the information into the public domain, then it would belong to whoever provided it, not the inventor, and thus counts as Prior Art against the inventor (and thus, not patentable by the inventor). There is a one-year grace period between the time that you disclose the information, and the time that your publication grace period expires. So my understanding from this is that it actually works in your favor to document your IP, as long as you document it properly, make sure you are recorded as the person documenting it, and you follow through within 1 year. In the example of saying it out loud in a room of people (aka co-working space), then I can understand how it might be difficult to validate and record who actually said what. When documented on paper (or what they call, a Printed Publication), then it would be much easier to validate and record who provided the information. To get more information on how to properly document IP in a Printed Publication, here are some guidelines [1]. Aside from the methods described there, you can also leverage something called a Statutory Invention Registration. This basically means you want to prevent the invention from ever being patented by anyone, so you describe the invention and officially record it with the USPTO, and then waive your right to patent it. You can read more about Statutory Invention Registration here [2]. Getting back to your question, if you are really concerned about someone stealing your IP, then read link [1] and use some of those methods to document your IP. You could also go through the process of actually filing an application. I don't think just running your code constitutes as public disclosure (unless you display it on a projector up on the wall or something). A good rule of thumb is to just be careful about what you share, and whom you share it with. If you feel that it needs to be disclosed, then disclose it properly and protect yourself. [1] http://www.uspto.gov/web/offices/pac/mpep/s2128.html http://www.uspto.gov/web/offices/pac/mpep/s2128.html [2] http://www.uspto.gov/web/offices/pac/mpep/s1101.html http://www.uspto.gov/web/offices/pac/mpep/s1101.html

Killah911 13y ago
I'm not worried about someone stealing my idea. I'm more on the side of putting together a tech incubator/co-working space in my local community. It's gotten quite a bit of traction and the IP lawyer was speaking at an event the we were hosting. Since he brought up that, "public use" or making the information "Known". The part that was new to me was that the "one year grace period" apparently no longer exists! So, according to him, it was implied that if were working out of open-floorplan co-working ideas that we're pushing, you would have essentially contributed you inventions to the public domain and couldn't file a patent on it (since the 1 year grace period no longer exists). This information struck me as an important thing that anyone working in a shared workspace should know & that perhaps have already worked out. Hence, reaching out to HN. Here's the info of the lawyer who did the presentation: http://www.hctlaw.com/pages/professionals/stephen-c-thomas-esq/ http://www.hctlaw.com/pages/professionals/stephen-c-thomas-e...
- shawnreilly 13y ago
  First off, Congrats on starting your own Co-Working space. That's no easy task, and I commend you for building the startup ecosystem in your area. I see where you're coming from, you want to protect all the people that use your co-working space. Regarding the one year grace period, I should just state that Mr. Thomas (the IP lawyer) undoubtedly knows more about Patent Law than I do. But I think the question should be explored further, because I do not really agree with that insinuation. I should also consider that I was not there, and thus don't want to presume anything (I dont know what was said). I think the best way I can help is just to explain my own understanding of how the AIA (America Invents Act) impacted the grace period, and let you decide (or correlate with your own research). From what I understand; Previous to the AIA, the grace period applied to "all disclosures", meaning that the invention could be disclosed by someone (or some entity) other than the inventor, and still be considered a Publication for the inventor. After the AIA, the grace period only applies to the inventors own disclosures, which means the inventor must disclose the invention himself/herself for it to be considered a Publication. Hope this helps!