Hunt, Graham. Dear All,

Transcription

1 Hunt, Graham From: Sent: To: Subject: Private Equity and Venture Capital Committee on behalf of Mattia Colonnelli Tuesday, November 27, :26 PM Start-Up_Algorithm_Patent Dear All, I am advising an Italian start up company (big data). I am currently negotiating a first round investment with a venture capital fund. The main and more valuable asset of the start up is an algorithm. According to certain high level researches conducted, it seems that an algorithm is patentable in US, if certain conditions are met (while in Italy, and Europe at large, the scenario is different). The client is considering to patent such algorithm in US before going forward with the first round. Is an algorithm patentable in US? Under which conditions? What are the associated costs? Any advise will be more than welcome. Many thanks. Best regards from Italy, Mattia avv. Mattia Colonnelli de Gasperis Colonnelli de Gasperis Studio Legale Via G. Morone, Milano T F Mobile mcolonnelli@colonnellilaw.com 1

2 Hunt, Graham From: Sent: To: Subject: Attachments: Private Equity and Venture Capital Committee on behalf of Frank Natoli Tuesday, November 27, :41 PM Re: Start-Up_Algorithm_Patent image001.jpg Hi, A mere algorithm is not patentable because it is only the manipulation of data. This is a very controversial area. You have to convince the USPTO that it is not just abstract data and that it will culminate into a concrete outcome (not being a machine invention). A good example of a successful business method patent that was not considered mere data is Amazon s one-click shopping cart process. But even here you can see the arguments against patentability. This is not to say that your client should not explore all the opportunities, but being in the IP business I recognize that these type of patents end up being a huge waste of time and money in my opinion especially if you are not dealing with a larger company with great resources. The big question for your client here is what are you seeking to protect exactly? In so many cases the client mistakenly believes that a patent will protect the what of their idea when in fact it only protects the how. For example, if I write the code in another language have I obviated your invention claims and frustrated your business purpose? It is always worth a consult with a good patent lawyer skilled in this area, but I am quite skeptical when clients come to us with similar concerns. For the record, while my firm handles patents through our patent counsel and I am not a patent lawyer, but do advise in this area. Very best, Frank Frank A. Natoli, Esq. Founder & CEO Natoli-Lapin, LLC 304 Park Avenue South, 11th Floor New York, New York (212) (866) **We are proud to announce that Lantern Legal Services was awarded the prestigious 2012 Louis M. Brown Award for Legal Access (Meritorious Recognition) given by the American Bar Association's Standing Committee on the Delivery of Legal Services at the ABA's Midyear Meeting in New Orleans, LA - Read Full Press Release 1

3 "Lighting The Way For Entrepreneurs!" "Far better it is to dare mighty things, to win glorious triumphs, even though checkered by failure, than to take rank with those poor spirits who neither enjoy much nor suffer much, because they live in the gray twilight that knows not victory nor defeat." --Theodore Roosevelt CONFIDENTIALITY NOTICE: This electronic message is from the law firm of Natoli-Lapin, LLC. It is intended solely for the use of the individual(s) to whom it is addressed. If you believe you received this in error, please notify the sender immediately, delete the from your computer and do not copy or disclose it to anyone else. If you properly received this as a client, co-counsel or agent of Natoli-Lapin, LLC, you should maintain the confidentiality of its contents in order to preserve the attorney-client or work product privilege that may apply. CIRCULAR 230 NOTICE: The following disclosure is now required pursuant to IRS Circular 230 which regulates the provision of written tax advice by federal tax practitioners. Any tax advice reflected in this or any attachment hereto was not intended or written by the practitioner to be used, and it cannot be used by the taxpayer, for the purpose of avoiding penalties that may be imposed on the taxpayer. This disclosure will also confirm that there is no limitation imposed hereby on the disclosure of the tax treatment or tax structure of any transaction that is the subject of this or of any attachment hereto. From: Private Equity and Venture Capital Committee [mailto:bl-pevc@mail.americanbar.org] On Behalf Of Mattia Colonnelli Sent: Tuesday, November 27, :26 PM To: BL-PEVC@MAIL.AMERICANBAR.ORG Subject: Start-Up_Algorithm_Patent Dear All, I am advising an Italian start up company (big data). I am currently negotiating a first round investment with a venture capital fund. The main and more valuable asset of the start up is an algorithm. According to certain high level researches conducted, it seems that an algorithm is patentable in US, if certain conditions are met (while in Italy, and Europe at large, the scenario is different). The client is considering to patent such algorithm in US before going forward with the first round. Is an algorithm patentable in US? Under which conditions? What are the associated costs? Any advise will be more than welcome. Many thanks. Best regards from Italy, Mattia avv. Mattia Colonnelli de Gasperis Colonnelli de Gasperis Studio Legale Via G. Morone, Milano T F Mobile mcolonnelli@colonnellilaw.com 2

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5 Hunt, Graham From: Sent: To: Subject: Private Equity and Venture Capital Committee on behalf of Qin Shi of ETL Tuesday, November 27, :12 PM Re: Start-Up_Algorithm_Patent Dear Mattia, From your description, your client would be well advised to get a patent application (and a priority date) on file before negotiating the first round. Generally speaking, a pure mathematic algorithm (without more) is not patent eligible under 35 USC 101. However, an algorithm based invention can be patentable if it satisfies the patentability standard under the patent statue. The US patent office and courts look at a number of factors to determine whether an algorithm based invention is nonetheless patentable; one relevant test is the so called machine and transformation test. The cost to file and prosecute a patent application in the US varies depending on the subject matter of the invention and the complexity of the application among other things. Feel free to get in touch directly if you d like to discuss in more detail. Best, Qin Qin Shi Managing Principal EDGETECH LAW LLP 2225 E. Bayshore Rd., Suite 200, Palo Alto, CA 94303, USA (T) (F) (M) * * * * * * This message may be confidential and protected under the attorney client privilege or other legal doctrines. If you are not the addressee or received this message in error, you are prohibited from using, copying or disclosing it; please notify the author by reply and destroy the message. Pursuant to IRS Circular 230 s disclaimer requirement, any tax advice that may be contained in this message is not intended to be and cannot be used to avoid tax penalties imposed by the US Internal Revenue Code. From: Private Equity and Venture Capital Committee [mailto:bl-pevc@mail.americanbar.org] On Behalf Of Mattia Colonnelli Sent: Tuesday, November 27, :26 AM To: BL-PEVC@MAIL.AMERICANBAR.ORG Subject: Start-Up_Algorithm_Patent Dear All, I am advising an Italian start up company (big data). I am currently negotiating a first round investment with a venture capital fund. The main and more valuable asset of the start up is an algorithm. According to certain high level researches 1

6 conducted, it seems that an algorithm is patentable in US, if certain conditions are met (while in Italy, and Europe at large, the scenario is different). The client is considering to patent such algorithm in US before going forward with the first round. Is an algorithm patentable in US? Under which conditions? What are the associated costs? Any advise will be more than welcome. Many thanks. Best regards from Italy, Mattia avv. Mattia Colonnelli de Gasperis Colonnelli de Gasperis Studio Legale Via G. Morone, Milano T F Mobile mcolonnelli@colonnellilaw.com 2

7 Hunt, Graham From: Sent: To: Subject: Private Equity and Venture Capital Committee on behalf of Stephen Y. Chow Tuesday, November 27, :18 PM Re: Start-Up_Algorithm_Patent The climate has changed for algorithms in the US. In fact, the standards are somewhat similar with Europe that there needs to be technological content, i.e., something in physical data movement/processing rather than simply the use of the Internet. It s not quite machine or transformation, which the U.S. Supreme Court rejected as too stringent, but one may not preempt all uses of a mathematical formula (algorithm) and thus must have some meaningful restriction to some physical (even electrical) element. The preparation cost here in the Boston area is $7 9K (unchanged over decades because solo practitioners compete in this area, and they are perfectly acceptable to universities, start ups and industrial companies building patent portfolios [rather than their strategic patents]). It may be worth filing a provisional application (just enabling disclosure actually kept confidential until a real application is filed) to preserve a priority date (then file a real application or international application within a year). Pre funding this is always a good idea. You can legitimately say patent pending and put non NDA prospects (and subsequent seekers of funding) on notice. Stephen Y. Chow Burns & Levinson LLP From: Private Equity and Venture Capital Committee [mailto:bl-pevc@mail.americanbar.org] On Behalf Of Mattia Colonnelli Sent: Tuesday, November 27, :26 PM To: BL-PEVC@MAIL.AMERICANBAR.ORG Subject: Start-Up_Algorithm_Patent Dear All, I am advising an Italian start up company (big data). I am currently negotiating a first round investment with a venture capital fund. The main and more valuable asset of the start up is an algorithm. According to certain high level researches conducted, it seems that an algorithm is patentable in US, if certain conditions are met (while in Italy, and Europe at large, the scenario is different). The client is considering to patent such algorithm in US before going forward with the first round. Is an algorithm patentable in US? Under which conditions? What are the associated costs? Any advise will be more than welcome. Many thanks. Best regards from Italy, Mattia avv. Mattia Colonnelli de Gasperis Colonnelli de Gasperis Studio Legale Via G. Morone, Milano T F Mobile mcolonnelli@colonnellilaw.com 1

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9 Hunt, Graham From: Sent: To: Subject: Private Equity and Venture Capital Committee on behalf of Hawthorne, Michael de Leon Tuesday, November 27, :43 PM Re: Start-Up_Algorithm_Patent The algorithm would have to be tied to something that is material transformed or to physical structure (algorithms in the abstract are not patentable). The obviousness of the algorithm itself would also likely influence the overall patentability of the invention. For example, we have been successful with patents relating to MRI algorithms by simply reciting the steps of the algorithm and including an additional steps of acquiring data from an MRI scan and generating an MRI image from the data using the algorithm (the data being that which is transformed into an image). However, such MRI algorithms are novel and nonobvious by themselves (they just aren t patentable subject matter by themselves). To the extent an algorithm is obvious, merely automating it via a computer or network might render it patentable subject matter, but won t necessarily render it nonobvious. The costs of preparing such applications tend to be on the high side, especially when the inventors aren t sure what the particular points of novelty are (maybe $15,000-$20,000, unless the point or points of novelty are clear). Please feel free to contact me directly if you would like to discuss further. Michael Michael de Leon Hawthorne mhawthorne@thompsoncoburn.com P: F: M: Thompson Coburn LLP 1909 K Street, N.W. Suite 600 Washington, D.C Licensed in Illinois and Kentucky; District of Columbia Bar application pending - supervised by DC licensed attorneys From: Private Equity and Venture Capital Committee [mailto:bl-pevc@mail.americanbar.org] On Behalf Of Mattia Colonnelli Sent: Tuesday, November 27, :26 PM To: BL-PEVC@MAIL.AMERICANBAR.ORG Subject: Start-Up_Algorithm_Patent Dear All, I am advising an Italian start up company (big data). I am currently negotiating a first round investment with a venture capital fund. The main and more valuable asset of the start up is an algorithm. According to certain high level researches conducted, it seems that an algorithm is patentable in US, if certain conditions are met (while in Italy, and Europe at large, the scenario is different). The client is considering to patent such algorithm in US before going forward with the first round. Is an algorithm patentable in US? Under which conditions? What are the associated costs? Any advise will be more than welcome. Many thanks. Best regards from Italy, 1

10 Mattia avv. Mattia Colonnelli de Gasperis Colonnelli de Gasperis Studio Legale Via G. Morone, Milano T F Mobile mcolonnelli@colonnellilaw.com Thank you for your continued interest in this list. A summary of your discussion list subscriptions, including BL-PEVC, can be found at This new List Subscription Page CONFIDENTIALITY NOTE: This message and any attachments are from a law firm. They are solely for the use of the intended recipient and may contain privileged, confidential or other legally protected information. If you are not the intended recipient, please destroy all copies without reading or disclosing their contents and notify the sender of the error by reply TAX DISCLOSURE: The IRS requires that we inform you that any U.S. federal tax advice in this message (including any attachments) is not intended or written to be used, and cannot be used, to (i) avoid any penalties under the Internal Revenue Code or (ii) promote, market or recommend to another party any transaction, arrangement or other matter. 2