This document provides an overview of strategies for protecting business ideas and intellectual property (IP). It discusses why IP is important, as IP theft costs US companies $250 billion annually. The document outlines different types of IP including patents, copyrights, trademarks, and trade secrets. It provides case studies and assessments to help businesses identify their IP. Key strategies discussed include identifying IP, protecting IP through registration and agreements, and addressing ownership, timing, and location challenges. The document emphasizes the importance of securing IP through technical founder agreements, outsourcing agreements, and non-compete agreements. It provides resources for IP assistance and stresses the importance of safeguarding IP through ongoing protection.
2. Got Intellectual Property?
Why Care…
• IP theft costs US companies $250
billion annually
• 100% of all companies have IP
• 700K new startups annually vs. 20%
protected IP after 1st year
• IP is most valuable asset and not on
your Balance Sheet
• Exclude competition; Attract
investment (incl. crowdfunding);
Leverage & license
• Avoid IP loss, infringement, or
business failure
Disclaimer: This is intended to be general information. Nothing in this presentation constitutes
legal advice. Please consult with an attorney before making any intellectual property protection
decisions.
4. Case Studies
IP Awareness Assessm ent
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Inventor
Website
Software
Restaurant
Traklight!
2/ 26/ 13 11:42 AM
IP category
Trademarks
IP Strategies & Best Practices
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Q5. Do you control and manage the proper use of your trademark by other users
you have authorized?
Trademarks
Copyrights
1. Yes.
2. No.
Design Patents
3. Not sure.
Trade Secrets
Utility Patents
Using Technology of Others
Next
Licensing Technology to Others
International IP Rights
IP Asset Tracking
Before starting the assessment, please note:
Save the link for this page as a favorite/bookmark on your browser.
In the “Internet Options” of your browser, deselect/uncheck history on exit. This will allow you
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Important Notice
also allow you to access your training materials and assessment results at your convenience.
Please note that any information provided
here does not constitute legal advice, but is
intended to increase your IP awareness.
When filing an application for obtaining
specific IP rights, it is recommended that you
obtain professional legal assistance. The IP
Awareness Assessment contains links to
external websites. USPTO does not maintain
those external sites and is not responsible for
the material found therein.
As you are answering the assessment questions, choose the answer that best applies to your
business or circumstances as an independent invento r or individual. Where applicable, cho ose all
the responses that apply to your situation.
Responses or data collected in the assessment are not stored or used by the USPTO or NIST MEP.
Accessibility
Federal Activities Inventory
Department of Commerce
Strategy Targeting Organized
Privacy Policy
Reform (FAIR) Act
NoFEAR Act Report
Piracy (STOP!)
Terms of Use
Notification and Federal
Regulations.gov
Careers
Security
Employee Antidiscrimination
STOP!Fakes.gov
Site Index
and Retaliation (NoFEAR) Act
Department of Commerce
Contact Us
Budget & Performance
USA.gov
Emergencies/Security Alerts
Information Quality Guidelines
USPTO Webmaster
Freedom of Information Act
This page is owned by Inventor Resources.
http:/ / www.uspto.gov/ inventors/ assessm ent/ assessm ent.htm l
Last Modified: February 26, 2013
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6. Start on the Right Trak
Do NOT start with creating a:
Campaign
Pitch
or
Business Plan
THIS APPLIES TO ALL FINANCING!
Disclaimer: This is intended to be general information. Nothing in this presentation constitutes
legal advice. Please consult with an attorney before making any intellectual property protection
decisions.
8. WHO: IP Ownership Challenges
• Multiple Inventors
• Who you are? Employee of another company
• Proper Assignment of IP Rights – personal versus
company
• Assume that Ownership automatically extends outside
the US
9. WHEN: Key Dates to Remember
• Date of Idea/Invention (First to Invent First
INVENTOR to file)
• Date of Use
• Date of Filing
• Date of Conversion
• Renewals
11. Strategies to Protect IP
• Do it Yourself:
– USPTO.gov
– Copyright.gov
• Hire a Professional:
– Attorney, Consultant, Legal Zoom, Rocket Lawyer
• Secrets:
– Notary, IP Vault, Copyright software
12. Ignorance is NOT a Defense
Be Careful:
Video
Copy
Business Plans
15. Operating Agreement Must Haves
Buy-Sell Language
Provisions for Death or Divorce
Different Classes of Units
“Profits Interest” Language
Valuation Formula
Deadlock Provision
17. Working with a
Technical Co-Founder?
Technology Assignment Agreement
or Exclusive License
• Broad as possible
• Terms should be worldwide, right,
title or interest to company and
forever (perpetual)
• Confidentiality
• Ability to get injunctive relief
• Strong Reps and Warranties
18. Outsourcing Your Development?
Development, Consulting or Work Made
for Hire Agreements
Work Made for Hire but Cover Your Bases
Master Agreement with SOW Attached
Reps and Warranties, Indemnity, Insurance
Non-Disclosure Agreements
21. Safeguard Your IP
Actively protect it
Trademarks
Patents
Trade Secret Protection
IP Identification and Storage
Product Traklight at www.traklight.com
22. Find the Right Lawyer
INTERVIEW AT LEAST THREE
EXPERIENCE—TECHNICAL,
BUSINESS
PHILOSOPHY
ASK FOR REFERRALS
FLEXIBILITY
VALUE
27. Option 1 – Public Disclosure
Advantages:
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Easy
Inexpensive
Disadvantages:
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Discloses your hand to the public
Foreign filing rights lost
Must file an application in the U.S. within one year
Places you on the defense to prove disclosure if third party
files first
28. Option 2 – File Provisional Application
Advantages:
•Better (?) documentation of invention
•Invention is held in secrecy
•May preserve foreign filing rights
•Provides foundation for non-provisional application
•“Patent Pending” status
•May extend the patent term
Disadvantages:
•More costly
•Can expose eventual patent to invalidity issues
29. Content
Must Include:
•Specification that conforms to the disclosure requirements of
35 U.S.C. §112
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Enablement
Written description disclosure requirement
•Drawings – if needed to understand the invention
Need Not Include:
•Claims
•
But, without claims, later patent relying on the provisional may be
invalidated if shown that inventor did not have a full grasp of
his/her invention (i.e., fails written description disclosure req.)
30. Other Points
• In order to rely on the filing date of the provisional,
the non-provisional must:
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be filed within one year of the provisional;
properly state that it claims priority from the provisional;
have at least one common inventor with the provisional;
and
the claims of the non-provisional must be fully supported
by the specification of the provisional.
Kaufman study – not a lot of primary research on IPIP Loss – customer list stolen, create a brand and materials but infringing, and computer code not belonging to youIt is not just legal, it is good business. Not just IP attorneys but business attorneys. TI makes more from licensing than products, 40% of US companies’ value does not appear on BS (50% in the EU)
Car – represents Patents – think how many different patents are in a car.Coke – design of the bottleWebsite copyrightTrademark – Coke – protect from Brand confusion – l bought the wrong cookies! Looked it up Fig Newtons 1914ish and Newmans 1997 – hmmmmmm.Coke is $100 billion dollar brand and only $40 billion on the balance sheet…
Ask Audience what IP for each Case.Maria’s restaurant example - Have the name, working on the signage and everything, do not use yet but want to save money and wait to file until in use (means offered for sale) BUT someone else files – they win – explain Common Law TM but you do not have because not offered (explain Breanna’s pool concept – know your rights). Trade secrets need to be protected – process or recipes – have employees sign off and mention trade secrets specifically – also trade secret is different every state but need to take reasonable steps to protect something of value.Inventor – Phillip with Smart Focus, the need to document in proper inventors’ notebook and file patents but WAIT you infringed on a TM, any funding presentation, competition (crowdfunding will end up with a huge issue because Enabling Public Disclosure – all 3 are needed. Make sure all inventors’ listed – remember that if listed do NOT have to consult with you. Example from PGCC where the first guy said he did not have IP protection and was there seeking help and the second guy left an important piece at home.Website – copyright every 3 months for blog, careful re copyright taking others’ photos – just because no C does not mean that not still copyright issue. Also if you have videos done, make sure you have the copyright.Software created by outsiders – if they violate copyright and put into your code, can be a problem if not shown (open source read the T&Cs regardless). Need to have all IP assigned. Have business attorney check documents.DO NOT FORGET ABOUT managing IP – need to look for dates, renewals, maintenance fees etc.
Example of startup – to show that actually patents least amount of the time - NAME, BRAND, BLOG, Customer or Supplier List, and then Invention or Product – has 100% IP. Patents are more rare for startups! Trade secrets – cheapest but can be easiest to lose.If you patented the wheel (which I found out recently is not the actual tire) if you did not have the right to make a tie rod Example of focus on IP patents, miss the boat on the others, some simple things like protecting Trade Secrets with employees.1 – Simply does not. Only protected in the US. And also actions within the US can impact outside - example patents – until March 2013 changes, once you file in US, you have disclosed your invention and kills ability for international patents. Also, if you publicly disclose your invention with enough detail, you have also killed your ability for international patents 2 – simple ex. copyright – when many parties are doing a project – like these slides to more complex & problematic – patents – if more than one person listed on a patent as owner – regardless of contribution – EACH owner has the right to independently exploit the patent WITHOUT consulting the other.Example of a person who goes to a university and gets one idea from a professor and puts into patent – are they required to list that person as an inventor? 3 – who is actual owner of the IP – if individual inventor or person who filed, need to have a formal written assignment to the Company to assign all the rights otherwise…. 4 – May have a patented process but if an exclusive license to use or sell has been executed, then important to disclose and to understand how/if that impacts your ability to attract investors. 5. For example if you have a contractor developing software for you and they in turn use some freeware and you are charging for the software. You pay the invoice for the contractor and you think that you own this new software. Issues – copyright infringement because free ware used and then resold; if you have not expressly outlined who owns the IP in the software in your contract, you may have not retained the rights to the software. Contractors are not same as employees.
Approach is methodical, like a checklist
Multiple inventors have the right
First INVENTOR to FILE and can Disclose and File.
Knowledge is PowerGet informed and you will save time and money.ABSOLUTELY get attorneys or consultants.