News, Information, Help, & Insight Into The Pekama Community

AuthorZeev Fisher

Getting your IP ready for the next funding round

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2 good reasons to think about how to represent your IP

Companies are expected to protect their IP. If they don’t protect IP that could be protected, they are perceived as not being serious – by existing and potential investors and by other stakeholders.

This is why companies engage IP attorney firms and spend time, money and energy.

However, whilst many companies are doing reasonably well in filing patent and trade mark applications, most companies are doing quite badly representing the status of their IP to potential investors.

Having made effort securing IP rights, there are two very good reasons to think carefully about representing your IP:

  1.      Reducing risk – the IP of companies is reviewed and checked by investors. At early stages, usually only the legal status is checked. Later, some companies drill down to the substance as well.
  2.      Increasing value – IP is part of the company’s value. Showing a strong picture of the IP, and primarily emphasising good news, creates a more attractive proposition to investors.

In our experience, most companies produce poor reports of their IP status that are not impressive to investors. Good news is rarely even mentioned, and the strategy of most companies is templated and not thoroughly considered.

Reducing risk – showing a full and clear picture of your IP

IP tends to be one of the last things on the CEO’s or CTO’s desk. A side task that is regularly overlooked.

Many companies believe that engaging a reputable IP firm is enough, but in practice, even the best IP attorneys need to be engaged with. They need guidance, they need to be asked the right questions, and companies need to know what they want to achieve and what to request.

Starting with the basics, here is what every business must have:

  1.   An up-to-date status report

A company should always have a full picture of the IP that it owns. This is called an IP status report and it should include:

         A list of inventions (patent families) and a list of brands (trademark families) owned by the company.

         For each invention and brand, a list of all IP rights (family members) – where have they been filed, what is the filing number, filing date, when is the next action due and what needs to be done.

         A list of approaching actions that are due.

  1.   The company owns all IP rights

One of the biggest risks facing investors is investing in companies that do not own the IP. This can happen because IP was registered under the name of an inventor before companies were established, new people joined, JVs were created or patents were licensed.

Investors also want to know that future IP that would come from existing inventions will not face problems or issues, so savvy investors would like to see an assignment of all future rights in each family to the company.

Making sure that ownership is recorded properly and all employment and contractor/consultancy agreements are in place is the basic of a sensible IP strategy.

Increasing value – explaining what the IP is about and reporting good news

Almost all IP status reports are excel documents showing which rights exist as per the mandatory list below.

Such lists are mainly a burden for investors. They will be checked for due diligence purposes but do not in themselves create any appetite to invest.

There are 3 easy ways to create a more attractive IP picture:

  1.      Include a description next to each patent family and brand explaining what they are meant to protect and why. Knowing what the IP is about helps investors understand what you are trying to achieve and why.
  2.      Mention good news – companies often understand that telling investors about granted patents is a good idea. However, it is often clear, long before grant, that the patents are heading in the right direction. Positive GB/EP/PCT search reports, for example, can indicate that the patents are on their way to be granted. Any such piece of good news can be reported with commentary. Furthermore, companies can actively engage in accelerating patent applications when good news are expected. This is rarely done.
  3.      Mention future plans – this needs to be done carefully and without disclosing unprotected IP, but investors would like to know that you will keep thinking and generate more protectability and what are you planning to protect.
  4.      Budget – generating a budget of expected expenses for IP protection will show your investors that you are calculated and informed and will help you prepare and potentially raise more money. Getting estimates from a single IP firm can be tricky, but possible, and alternatives exist.

Are you ready for the next funding round?

Zeev Fisher is the founder and CEO of Pekama, a company that uses technology to help companies manage their IP and cut costs. Pekama acts as a virtual IP department at no cost to the IP owner. To start finding your own IP, go to the Pekama site. For more information, get in touch.

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What are an international patent application (PCT) and an international search report (ISR)?

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Legal background – the role of the PCT application

Most inventors and companies (called “applicants” in the patent world) start the process of obtaining patents by filing a patent application in a single jurisdiction, typically where the invention is likely to be sold first. However, many applicants for patents have the ambition of later expanding their sales internationally and this requires a global patent coverage.

For a patent to be granted in any country, it should relate to an invention that is new and inventive. Since applicants publish their own inventions (and if they don’t, the patent offices do), these inventions, strictly speaking, are no longer new and inventive when they wish to sell the product in other countries.

In realizing this issue, countries came together to enact two international agreements – the Paris convention and the Patent Cooperation Treaty (PCT). The purpose of these agreement is to give applicants some time to submit applications in other countries, even after the inventions have been published. The way this is done is by allowing applicants who submit an application to claim priority to an earlier patent application that was submitted for the same invention. When a priority is legally claimed, the later application is considered as if it was submitted together with the earlier application. The ability to claim priority is what makes it possible for applicants to expend their patent protection globally.

The Paris Convention awards applicant the possibility of claiming priority to an application filed up to 12 months ago. The use of the Paris convention is free and any applicant enjoys this right automatically. Almost all the countries in the world are members of the Paris convention and even the ones that are not will normally award the same rights.

However, very few applicants are ready for an international expansion 12 months after their initial application date.

The Patent Cooperation Treaty (PCT) awards more time (typically an additional 18-19 months) for claiming priority. However, to enjoy these rights an applicant must submit (or “file”) an international patent application under the PCT treaty (“PCT application”). This application carries a fee and is normally done by patent attorney firms.

It is important to understand that despite its extremely confusing name, an international application does NOT grant any patent rights. It really is, and should be called, an extension application. The main function of the PCT application is to allow applicants more time to claim priority to its original application. The applicant still has to submit independent applications in each country where patent protection is desired. The main function of the PCT is to give the applicant more time to do so.

 

PCT applications are called “international patent applications for historical reason. The founders of the PCT were hoping that one day, it will be possible to submit a single international application that will grant worldwide cover, but this never happened (and is unlikely to happen in the future).

 

The international search report (ISR)

To determine whether a patent meets this criteria, patent examiners in each country conduct a search to identify “prior art” – that is – publications that have already been known when the patent applications was published. The determination of whether a patent application is new and inventive is made by comparing it to the prior art.

Apart from the PCT’s most important role – to allow applicants more time to submit national application and claim priority to an earlier application – the PCT also includes a mandatory patent search. This search is called ISR.

Since PCT applications do not grant patent rights, this search does not lead directly to any patents being granted or refused. It is, however, very important because each and every one of the national examiners in the different countries where the patent will eventually be filed will have access to it. Many of the national patent examiners will use the PCT search as a starting point to their own reports. It is therefore important to review what has been found in this search.

How to read the ISR?

Any publications mentioned in the PCT search report are marked by letters.

X means that the publication is considered to be similar to the claims listed on the right column.

Y means that two or more publications were combined to reach the conclusion that the inventiveness of the claims listed on the right column is not sufficient.

A refers to a publication that serves as background information and is not relevant to your invention. In other words, you can usually ignore A publications.

 

The written opinion

For most PCT applications, the search is followed by a written opinion of the examiner. This written opinion explains how the search results apply to the invention. It also indicates whether the examiner believes that any of the claims in your invention are new and inventive.

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How to grow your practice using Pekama

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What is the Pekama IP Community?

The Pekama IP Community is a trusted network of IP firms that work in favourable conditions with each other and are committed to supporting each other in growing each member’s IP practice.

How does it work?

The Pekama IP Community is a reputation-based system – it favours firms that support the community and its members. Contribution to the community is rewarded with community score and members are encouraged to work with firms with a higher community score.

We already know that community members who choose to work with other members are more pleased with the services they receive, receive more reciprocal work and have better ROI than any other form of business cooperation.

Our goal is to be the go-to place for working with foreign associates.

Is working with Pekama ethical and safe?

Absolutely. We are a highly ethical organisation. Feel free to read our ethical policy (below).

Where to start?

We recommend that you start by exploring the site.

Start by browsing existing community members, identifying community members that send work to your jurisdiction and saving them for later (when you have a case, you will get back to them).

Growing your Community score

Head to the GROW tab. This is where you build your community score, your online reputation on Pekama.

Community score is an incredible mechanism. It allows firms to get a real picture of the amount and type of activity of other firms on the platform. Pekama members who use it to send outbound work usually come back and believe in the system and the concept of a community. They therefore look for other firms that feel the same way and would be looking at the community score of the firms that they are looking at and prefer firms with a higher score.

There are three ways to grow your community score:

  • When you send a case to another member, you receive 100 points. You can start an inquiry to check members up and you don’t have to proceed with them.
  • When you invite a new member to the platform, you receive 50 points if that member signs up.
  • When you invite your own firm’s members (your team) you receive 5 points whenever one of your team members signs up.

 

Inviting your existing foreign associates

We firmly recommend that you invite all your existing foreign associates onto Pekama. This will allow you to work with them on Pekama and build up your community score by doing so. At the same time, if you invited a foreign associate who is not already on the platform, there will be no fee for any of you when you work with them. You will also appear on the top of their list for your jurisdiction. And finally, both you and your foreign associate will get a community score uplift when they sign following an invitation.

Pekama has grown from 0 to 800 members in just 6 months. It is likely that your foreign associates will have a Pekama account shortly anyway so help them out by inviting them yourself!

Your first outbound case

When you are ready to send your first outbound case, you can do it by choosing some members and clicking + START A NEW CASE. You can easily compare members’ prices, responses, and you can correspond with members until you are happy to proceed with one (you don’t have to proceed with anyone).

When a member confirms safe receipt of your case, your community score is boosted.

Pekama charges $50 from the recipient of the case for using the platform to manage the case. We offer subscription options as well.

Pekama doesn’t handle payments between firms but if a firm does not pay you and no proper reason is provided, we will get involved and, in extreme cases, will remove firms from the community for not paying. This gives you an extra layer of confidence and protection.

Our premium service – a great solution for busy IP firms

Many of our members are extremely busy. This is why we are offering a service whereby we will identify suitable firms and start an inquiry on behalf of our members. In doing so, we will try to identify firms based on what has been defined to us and unless otherwise instructed, suggest firms with reasonable prices, fast response times, fluent English and better chances of sending reciprocal work.

Our premium service is offered for 3 months on a complementary basis. After 3 months, we will make an offer based on the amount of activity. For firms with a great deal of activity, the service may be free forever!

Get in touch with jan at pekama dot com if you are interested in our premium service!

 

Pekama’s Ethical Policy

Pekama is a company that offer new and innovative ways for IP firms to operate.

The legal industry is highly regulated and in many countries there are limitations on what attorneys can do or cannot do.

The purpose of our ethical policy is to ensure our members that Pekama is committed to keeping a high ethical standard and to meeting the different rules of the many jurisdictions our members are coming from.

Whilst ethical rules vary, the principles are usually the same. We would therefore like to address the main points that our members are bringing up and to reassure them that being a Pekama member is a great ethical choice.

 

Our general commitment to ethics

We are committed to consider the ethical implications of our platform and to constantly work to make sure that our innovation is in line with ethical requirements.

We are committed to dealing with any questions and concerns brought up by members and will never dismiss any such concern. We will deal with any ethical issue with a “can do” attitude and will actively offer answers and solutions. Please don’t hesitate to raise any ethical issues with us.

Our Fees

Many jurisdictions do not allow attorneys to pay commissions or to split their fees at all or with non-attorneys. Other jurisdictions require that the attorneys disclose any arrangement of fee-splitting.

Pekama’s common billing model is charging a fixed amount (typically $50) from each member who manages a case over the platform.

Our fees are charged for the use of our platform, and hence, they do not amount to fee-splitting, or a referral commission.

We would like to make it absolutely clear that:

  • There is no fee for an introduction. In fact, members can start a conversation on Pekama with another member and carry on this conversation without a charge. The details of all members are open and members can find other members independently.
  • There is no fee for referral of work. Members are not obliged to use the Pekama platform to handle their work. Obviously, Pekama has no interest in supporting members who take their work off the platform and who are not interested to use it, but there is no obligation to pay a fee unless a member sees value in using the platform.
  • The fee is charged to use the platform to manage a case. Managing a case in Pekama means providing a better service to overseas members. It includes the storage of conversations and documents as well as access to the background docketing system.
  • There is no correlation between the case and the value of the case and the fee that we charged, which is a fixed management fee.

The use of Pekama is therefore equivalent to using a paid data rooms / online storage, and does not amount to fee splitting or a commission.

Confidentiality

Inquiries in Pekama start as conversations that include a Pekama member. We urge you to keep these conversations confined to published data and pricing information and general data and not to delve into specifics of cases. As soon as instructions are sent, we are automatically removed from these conversations. Pekama representatives can only enter conversations later for the purpose of technical support, if requested.

This means that Pekama representatives post-instructions have the same level of access as Microsoft does to Office 365, Google to Gmail, or Dropbox or Box to their products. In fact, there is a handful of people in Pekama who are allowed to enter conversations even for mere technical support.

Cloud services and security

Pekama stores conversations and documents in the cloud. Whilst there has been concerns in the past about cloud storage, there is now a consensus that cloud storage is much safer than in premise storage. Large pharma companies, as well as universities, are now storing all their data in secure cloud storage.

Pekama’s highly secure cloud storage is based on the AWS (Amazon) infrastructure in Ireland. This means that the US government has no access to it or an ability to obtain it with a warrant and that the data is subject to EU privacy law. AWS is known to be one of the most secure infrastructures in existence and is widely used for storing sensitive data, including governmental personal data.

All the data stored by Pekama is encrypted, both at rest and on the move.

Pekama does not store passwords. Instead, it stores the second degree hash values of passwords. This means that we don’t know what our members passwords are and are not able to enter their accounts without their permission.

Finally, Pekama instructs an external company of ethical hackers to try to penetrate its data and detect vulnerabilities on a regular basis. We constantly improve our data protection and add more and more layers of security.

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Pekama 2.0 is here to help IP attorneys grow their practice

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When we started the Pekama IP Community to empower IP attorneys and help them grow their practice. We took it upon ourselves to turn the IP world into a connected community, bring IP firms in different locations closer together and help them work with each other faster and more efficiently, on the basis of good data and a community vibe.

Within just 6 months, our membership base grew to over 800. An IP attorney can now rely on Pekama fully for her or his filing needs all over the world, but more importantly, any IP attorney knows that working with Pekama Community members means a higher chance to receive work from other community members.

Many of our members pointed out many things we could improve on the site. We were listening and learning and we are now incredibly proud to announce Pekama 2.0 – our new, shining, so-much-better, community platform.

Here’s part of what’s new: 

  • A new design – nicer, cleaner, professional-looking, design that is easier and clearer to use. We took a lot of advice from professionals to make Pekama easier and more intuitive.
  • Multiple countries in a single query – You can start conversations and request quotes for multiple jurisdictions in a single query. This is ideal for national phase applications or EP validations, or trademarks in different countries.
  • A single-number quote – You can now respond to a query with a single number quote which means a much easier way to see and compare quotations.
  • An opportunities area –  We now allow you to search for firms that have work in your jurisdiction and save them for later. This makes it easier to send work to firms who are more likely to reciprocate.

We hope you enjoy the new Pekama Community and would be very pleased to hear from you!

Yours,
Zeev, the Founder

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Welcome to our new blog!

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Welcome to the Pekama new blog! Our blog will give us a unique opportunity to share news, updates and healthy living content, while also offering another place for us to interact with our community.

We look forward to growing with you as we embark on this new journey. Thanks for stopping by!

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News, Information, Help, & Insight Into The Pekama Community

What we’re saying on Twitter

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- December 5, 2017

If you just happened to be in #berlin for #TCDisrupt, come and say hi to the Pekama team! https://t.co/rALsNa851S
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- November 27, 2017

Zeev Fisher (Pekama CEO) "drafting patents will be too boring for ai" https://t.co/r3iMKdd5iL
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- November 27, 2017

Great discussion on the 'the role of IP in commercialisation' #FTIPSummit17
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Zeev is chairing a panel here at #FTIPSummit17. His head is hidden the podium, so no photo!
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