Corporate Law Employment & Logistics

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Intellectual Property and Other Legal Issues for Emerging Companies

Presenters

Timothy K. Cutler, Esq.

Connie C. Dai, Esq.

CUTLER P.C.

10 Milk Street, Suite 720

Boston, MA 02108 www.cutlerlegal.com

Peter Stecher, Esq.

GesmerUpdegrove, LLP

40 Broad Street

Boston, MA 02109 www.gesmer.com

Peter Stecher, Esq.

peter.stecher@gesmer.com

• Practicing Patent Law for 12 Years

• 5 years as a Patent Agent and 7 years as an Patent Attorney

• Patent Prosecution and Litigation

• Expertise in Patent Matters Related to Electrical, Electronics, Optics and

Computer-Related Patents

• Industries Includes Universities, Clean Energy & Green Technology,

Consortium & Standards Setting, Hardware, Internet, Medical/Health,

Software and Telecom/Wireless

• Former Examiner of the U.S. Patent Trademark Office

• Registered to Practice at the U.S Patent Office and Licensed in

Massachusetts

• J.D. (Suffolk University)

• Electrical Science & Engineering (MIT)

• MBA Candidate (Northeastern)

Timothy K. Cutler, Esq.

tkc@cutlerlegal.com

• Practicing 24 Years

• 10 Years in Los Angeles & 14 Years in Boston

• Founded CUTLER P.C. in 2004

• Served as a Mediator

• Completed Over 30 Trials in 4 States

• Overseen Legal Matters in 8 States

• Represented Start-ups and Emerging Companies in the Areas of Software,

Internet, Retail, Engineering and Marketing

• Represented Chinese Companies

• Creates Legal Entities

• Drafts:

• Licensing Agreements, Contracts and Employment Agreements

• Handles:

• Employment Matters, Disputes Between Shareholders, Unfair Business Practices and Contract Disputes

• Handles:

• Purchase and Sale of Businesses

Connie C. Dai, Esq.

ccd@cutlerlegal.com

• Practice Areas:

• Business, Employment and Immigration Law

• Handles:

• Experience in Cross Border Transactions, Drafting and Reviewing Contracts,

Judicial Internship, Employment and Investor Visa and Immigration as well as

Naturalization

• Business and Financial Consulting with Start-Ups and Established Businesses

• Anti-Trademark Infringement Management, Joint Venture Negotiation, and

IP Training in Coca-Cola China

• NECINA – Fundraising and Public Relations

• Education:

• J.D. (Suffolk University); MBA (University of Calgary); and B.A. (Shanghai

University)

• Bar Admissions:

• Massachusetts; and New York (Pending)

• Languages:

• Native Mandarin; and English

What is a Patent?

A Patent is Basically a Contract Between the

Inventor(s) and the Government

INVENTOR(S) GOVERNMENT

Invention Disclosure

Limited Monopoly

What is a Patent?

• The Right to Exclude Others From:

• Making

• Using

• Offering for Sale

• Selling

• Importing

• In return for full disclosure, patent owner is granted the right to exclude others from making, using, or selling the patented invention

• Patent owner has a “limited monopoly (20 years from filing) preventing independent use or sale by others of the patented invention

Exhibit A

Exclusionary Right

Example

Exhibit B

What Can Be Patented?

35 U.S.C. § 101 Inventions Patentable

Whoever invents or discovers any new and useful process,

machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this rule.

The Value of Patents

Offensive

• Prevent Others From Making, Using Or Selling o Often Unrecognized

• Basis For Licensing To Generate Royalty Income

Defensive

• Shield Against Actions By Others

• Basis For Settlements Based On Cross-licensing

Standard of Patentability

Invention Must Be Novel (New), Useful, And Non-Obvious

• Utility o Any Beneficial Use

• Novelty o Not Already Described Or Patented Elsewhere, Or Known, Used Or

Available To Others In The U.S.

• Non-Obviousness o Standard Is One Skilled In The Relevant Technology

Engineer’s Standard (?)

 Legal Standard (would it have been obvious to one of ordinary skill in the art)

United States Patent

Rainer

[19] [11] 3,787,678

[45] Jan. 22, 1974

_______________________________________________________________________________

[54] RECHARGEABLE BATTERY POWERED Primary Examiner—Samuel S. Matthews

LIGHT Assistant Examiner—Michael L. Gellner

[76] Inventor: Robert R. Rainer , 204 Bertly,

Moberly, Mo. 65270

[22] Filed: Dec. 13, 1972

[21] Appl. No.: 314,787

[52] U.S. Cl .………………… 240/10.6 CH

[51] Int. Cl ……………………..

F211 7/00

[58] Field of Search ………… 240/10.6 CH

[56] References Cited

UNITED STATES PATENTS

[57] ABSTRACT

An improved flashlight that includes D.C.( current dry cell batteries which can be readily replaced or which alternately can be easily recharged without need to be removed from the flashlight case; the device, including a receptacle in circuit with the batteries, the receptacle being adaptable to receive a plug on an extension cord that can be connected to either a 6 or 12 volt D.C. direct current outlet such as on an automotive vehicle or portable battery charger.

1,506,302 8/1924 Hopkins …240/10.6 UX

2,818,498 12/1957 Foch …….240/10.6 UX 1 Claim, 2 Drawing Figures

RECHARGEABLE BATTERY POWERED

LIGHT

This invention relates generally to flashlights.

A principal object of the present invention is to provide a flashlight which can be readily recharged so that the batteries are always fully charged for instant use.

Another object is to provide a flashlight that can be readily recharged from any D.C. direct current outlet of 6 or 12 volts such as an automotive vehicle or a portable battery charger.

Another object is to provide a flashlight that accordingly eliminates the expense of periodically purchasing new batteries.

Another object is to provide a flashlight in which the batteries do not have to be removed from the case in order to be recharged.

Other Objects are to provide a rechargeable battery powered light which is simple in design, inexpensive to manufacture, rugged in construction, easy to use, and efficient in operation.

These and other objects will be readily evident upon a study of the following specification and the accompanying drawing, wherein:

FIG. 1 is a side view of the invention shownpartly in cross section.

FIG. 2 is an electrical diagram of the invention.

Referring now to the drawing in detail, the reference numeral 10 represents a rechargeable battery powered light according to the present invention in which there is a case 11 haying a removable rear end cap 12 screwed on so to permit installing D.C. current dry ce11 batteries

13 therewithin. A compression coil spring 14 between the batteries and the end cap provides a ground contact from the batteries to the case.

The other end of the batteries is connected through a battery cover to one terminal of a lamp 15 in the other end of the case. A reflector 16 around the lamp directs light rays out of a lens 17 in front of the lamp and mounted in a bezel 18 screwed on the case end so to allow replacement of the lamp in case it burns out. Another terminal of the 1amp is

3,787,678 connected to one terminal of an on-off switch

19 mounted on an outer side of the case, the other end of the switch being grounded.

A receptacle 20 formed on a side of the case is adaptable to receive a plug 21 connected to a 6 or 12 volt D.C. power source. One terminal of the receptacle is grounded to the case as shown at 22 , and another terminal thereof is connected to the battery cover 23 on the batteries.

A safety cover 24 is slidable along the outer side the case so to cover up the switch 19 during recharging operation and prevent it accidentally being turned on.

When not plugged in for recharge, tle flashlight is readily portable for normal illuminating use.

While various changes may be made in the detail construction, it is understood that such changes will be within the spirit and scope of the present invention as is defined by the appended claims.

One such change different, from the construction shown in the drawing, would be that the batteries can be installed into the base from either end.

I claim:

1.

In a rechargeable battery powered light, the combination of a case having a removable end cap at a rear end for closing a rear opening in said case, D.C. current dry cell batteries being removably received through said opening into an interior chamber of said case, a lamp in a front end of said case, a switch on a side of said case, said batteries, lamp and switch being in a series electrical circuit, a recharging receptacle on said case for receiving a male plug connected to an external electric power source, said recharging receptacle having terminals electrically connected to opposite terminals of said batteries, and a safety cover being slidable along an outer side of said case so to selectively cover up a normally exposed switch button of said switch during recharging period and preventing said circuit accidentally being closed at such recharging time.

* * * * *

3,787,678

1. In a rechargeable battery powered light, the combination of a case having a removable end cap at a rear end for closing a rear opening in said case, D.C. current dry cell batteries being removably received through said opening into an interior chamber of said case, a lamp in a front end of said case, a switch on a side of said case, said batteries, lamp and switch being in a series electrical circuit, a recharging receptacle on said case for receiving a male plug connected to an external electric power source, said recharging receptacle having terminals electrically connected to opposite terminals of said batteries, and a safety cover being slidable along an outer side of said case so to selectively cover up a normally exposed switch button of said switch

during recharging period and preventing said circuit accidentally being closed at such recharging time.

United States Patent

[19]

Kretchman et al.

[54] SEALED CRUSTLESS SANDWICH

[11] Patent Number:

[45] Date of Patent:

6,004,596

Dec. 21, 1999

______________________________________________________________________________________________________

5,853,778 12/1998 Mayfield……426/89

[75] Inventors: Len C. Kretchman , Fergus

Falls, Minn.; David Geske ,

Fargo, N. Dak.

[73] Assignee: Menusaver, Inc .,

Ortwille, Ohio

[21]

Appl. No.: 08/986,581

OTHER PUBLICATIONS

"50 Great Sandwiches", Carole Handsllp, pp.

81-84,86,95, 1994.

Primary Examiner-Lien Tran

Attorney, Agent, or Firm-Vickers, Daniels & Young

[22] Filed: Dec. 8, 1997

[51] Int. Cl.............................................A21D 13/00

[52] U.S. Cl……………..26/94; 426/274; 426/275;

426/29

[58] Field of Search

……………………..

426/94, 274, 275,

426/297, 138

[56] References Cited

U.S. PATENT DOCUMENTS

3,083,651 4/1963 Cooper……………426/275

3,690,898 9/1972 Partyka………….....26/275

3,767,823 10/1973 Wheeler et al……..426/275

3,769,035 10/1973 Kleiner et al...........426/275

3,862,344 1/1975 Zobel…………….426/244

4,382,768 5/1983 Lifshitz et al……..426/275

[57] ABSTRACT

A sealed crustless sandwich for providing a convenient sandwich without an outer crust which can be stored for long periods of time without a central filling from leaking outwardly. The sandwich includes a lower bread portion, an upper bread portion, an upper filling and a lower filling between the lower and upper bread portions, a center filling sealed between the upper and lower fillings, and a crimped edge along an outer perimeter of the bread portions for sealing the fillings therebetween. The upper and lower fillings are preferably comprised of peanut butter and the center filling is comprised of at least jelly.

The center filling is prevented from radiating outwardly into and through the bread portions from the surrounding peanut butter.

10 Claims, 4 Drawing Sheets

Patent or Not?

• Pros and Cons of Having a Patent

• Factors to Consider

• Nature of Business/Business Model

• Prototype

• Life Cycle of Products/Service

• Manufacturing Process

• Benefit Cost Analysis

Changes in Patent Law

• AIA – American Innovation Act

• Potential implications on business

Copyright

• What Is Copyrightable?

Original Works of Authorship Fixed in Tangible Medium of Expression

• Exclusion

• Merger Doctrine

• Compilations

• Copyright Owner’s Rights

• Reproduce

• Derivative

• Distribute

• Public Display

• Statutory Exemption – Fair Use

Trademark

What is a Trademark?

Why is a Trademark Useful?

How will a Trademark Offer Protection?

Trade Secrets

What is a Trade Secret?

• Information Not Known to the Public at Large

• It Can Be a Compilation of Public Information

• Something that Gives a Company a Competitive Edge or Advantage in its

Business

How Does a Company Protect Its Trade Secrets?

• Policies and Procedures

• Limit Access to the Trade Secret

Non-Disclosure Agreements

• What is a Non-Disclosure Agreement?

• When are Non-Disclosure Agreements Used?

• What to Look for in a Non-Disclosure Agreement:

• Description Of What Is Being Disclosed

• The Circumstances Surrounding The Disclosure

• Does Not Constitute A License

• No Limits On Consequential Damages

• Choice Of Law Provisions

Work-For-Hire

What Does Work-for-Hire Mean?

What is the Work-For-Hire Definition:

• Work performed by an employee within his/her scope of work; or work that is commissioned, specified as a work-for-hire in a written agreement and is identified by statute as matters falling within the work-for-hire definition

• The definitions are narrowly construed and are (1) A contribution to a collective work; (2) A part of a motion picture or other audiovisual work as a sound recording; (3) A translation; (4) A compilation; (5) An instructional text; (6) A test; (7) Answer to material for a test; or (8) An atlas.

• Software is not included

What is the Use of Licensing Agreements as an Alternative to

Being a Work-For-Hire?

Licensing Agreements

What Types of Software Licensing Agreements Are There?

• Perpetual

• Fixed Term

• Multiple Users

• Pay Per Use

• Exclusive

• Non-Exclusive

Pricing Impacting/Limiting Amounts of Future Licenses

Non-Compete Agreements

Such Agreements Are NOT Favored in the Law

Such Agreements Must be for a Legitimate Business Purpose:

• Protect Trade Secrets

• Protect Confidential Information

• Protect Goodwill

What Language Should be Included in the Agreement?

• Describe the Confidential Information

• Reasonable Time and Scope

Who Owns Goodwill?

• The Court’s General View of Goodwill

What is a Non-Solicitation Agreement?

Contrast to Confidentiality Agreements

Options For Non-Resident

Entrepreneurs

Part-Time Entrepreneur

• Start A Business While On H-1B Sponsored By An Employer

Full-Time Entrepreneur

• Start A Business And Use It To Sponsor Your H-1B

• Establish US Subsidiary Of Foreign Company And Use It To Sponsor L-

1 Multinational Manager Or Employee With Special Knowledge

Start A Business While On H-1B

• Type Of Business To Incorporate

• Restricted Role As “Passive Investor”

• Limited Tax Advantages

Start A Business

And Sponsor Own H-1B

• Key Is Valid Employer/Employee Relationship

• Feasible And Sound Business Plan

• Independent Board Of Director

• Managerial Capacity

• Hiring Plan Of Other Employees

• Client Contracts

• Office Lease

U.S. Subsidiary and L-1 Visa

• Must Work 1 Out of 3 Years in Parent Company

• In Managerial Role or Employee with Special Knowledge

• Strong Track Record of Parent Company Helpful

• Feasible and Strong Business Plan

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