Post on 20-Jun-2015
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ip crash course for ip crash course for mobile startups:mobile startups:
a practical approacha practical approach
ernest grumblesernest grumbles
adams monahan llpadams monahan llp
3.21.20123.21.2012
start with hardwarestart with hardware
then the software…then the software…
how about interface how about interface design…design…
or interface functionality or interface functionality (Apple multi-touch patent (Apple multi-touch patent
app…)app…)
a method of location-based a method of location-based messagingmessaging(MS patent)(MS patent)
brands….brands….
attachments….attachments….
what is ip?what is ip?
ip typesip types
patentpatenttrade secrettrade secrettrademarktrademarkcopyrightcopyright
9 things about patents9 things about patents
patents-#1 patents-#1 what?what?
exclude exclude othersothers from use of an from use of an invention. invention.
reward inventors for a reward inventors for a limitedlimited period period
all countries have patent all countries have patent systemssystems
patents-#2 patents-#2 why?why?
market exclusivity strategic tool against competitors Licensing value in business – “patent pending” investment, acquisition
patents-#3 patents-#3 examplesexamples
patents-#4 patents-#4 processprocess
identify inventions maintain secrecy gather information and prepare
an application file with the pto hang on the wall
patents-#5patents-#5time to gettime to get
18 months to 5 years from filing of application.
length varies by technology software patents – up to 5 years
Claims may never issue.
patents-#6 patents-#6 costcost
$500 to $5000 for provisional application
$4000-$18,000 for non-provisional application
depends on technology, business goals and timing
patents-#7 patents-#7 durationduration
20 years from filing once it dies, it’s dead but:
continuation-in-part applications
patents-#8 patents-#8 enforcement/defenseenforcement/defense
search before new tech release patent litigation ain’t cheap $3 million in fees/costs would be a
good deal for an active case cases can last 2-5 years
The The Moile Moile Patent Patent Wars Wars 20112011
patents-#9 patents-#9 best practicesbest practices
do you know your IP? does the company own the ip?? what tech drives revenue?
patents-#9…. patents-#9…. best practicesbest practices
confidentiality provisional = quick “patent
pending” periodically review R&D
philosophical philosophical interlude:interlude:
choose one - choose one - * patents rock!* patents rock!
* patents s-ck!* patents s-ck!
9 things about trade 9 things about trade secretssecrets
trade secrets-#1 trade secrets-#1 what?what?
confidential information that has value from not being generally known
protection only as long as secret kept – like the Coke formula
statute (like Uniform Trade Secrets Act) and contract
trade secrets-#2 trade secrets-#2 why?why?
value in business – proprietary formulas/processes
preserve market advantage keep secret forever – can’t with
patents preserve patentability of inventions
trade secrets-#3 trade secrets-#3 examplesexamples
MARKET PLANS, FINANCIALS, SUPPLIER LISTS, CUSTOMER LISTS
trade secrets-#4 trade secrets-#4 processprocess
maintain secrecy of data identify inventions control access consider a log
trade secrets-#5 trade secrets-#5 time to gettime to get
you own as soon as you create
no formal filing process
trade secrets-#6 trade secrets-#6 costcost
cost of development cost of maintaining secrecy
trade secrets-#7 trade secrets-#7 durationduration
perpetual – if it can be maintained as such
coke formula the rabbit has to stay in the hat
trade secrets-#8 trade secrets-#8 enforcement/defenseenforcement/defense
when to sue? complex litigation often bundled with employee-
related disputes (coke-pepsi) injunctions…! costs - $400k-$3 million
trade secrets-#9 trade secrets-#9 best practicesbest practices
confidentiality policies (“CP’s”) use NDA’s when possible mark “confidential” materials as
such protect sensitive materials (or
facilities)
9 things about trademarks9 things about trademarks
trademarks-#1 trademarks-#1 whatwhat
exclusive use of brand for specified goods or services
rights based on use in the marketplace U.S. federal and state level (statutes
and common law)
all countries have trademark systems
trademarks-#2 trademarks-#2 whywhy
market exclusivity for brands – unique association
promote customer loyalty (TONY THE TIGER)
prevent customer confusion strategic tool against competitors build value in business – ®
trademarks-#3 trademarks-#3 examplesexamples
word mark: EXXON stylized word mark: design mark: TONY THE TIGER color: yellow for sticky note pads
(“Post-Its”) product shape: the Coke bottle
trademarks-#4 trademarks-#4 processprocess
identify brands (incl. future brands) evaluate market
significance/strength of mark search! federal v. state file application prosecute to registration
trademarks-#5 trademarks-#5 time to gettime to get
common law – rights upon use federal registration process -
can take 18 months state registrations – much
quicker
trademarks-#6 trademarks-#6 costcost
trademark search - ~$700 U.S. tm app. - ~$1000 (single class). up to $2K in additional prosecution
costs state tm’s – much cheaper foreign applications - generally more
trademarks-#7 trademarks-#7 durationduration
perpetual??? registrations indefinitely renewable STELLA ARTOIS – claims rights back
to 1366 when marks die – ASPIRIN, ZIPPER,
DRY ICE, ESCALATOR (generic terms)
trademarks-#8 trademarks-#8 enforcement/defenseenforcement/defense
sue for likelihood of confusion (similar mark on similar goods)
trademark litigation ~$400K-$2M.
most disputes settled cases can last 1-3 years.
trademarks-#9 trademarks-#9 best practicesbest practices
communicate with marketing/product teams on brands
search before you sell! prioritize revenue-driver brands
trademarks-#9 trademarks-#9 best practicesbest practices
file Intent to Use (ITU) applications for quick protection
maintain uniformity of use enforce rights
copyrightscopyrights
protects protects writings/images/soundswritings/images/sounds
inexpensive to registerinexpensive to register protection lasts over 100 protection lasts over 100
yearsyears
copyrights, cont….copyrights, cont….
register soon after public register soon after public releaserelease
protected by U.S. statutesprotected by U.S. statutes good for company code, good for company code,
manuals, imagesmanuals, images litigation – not cheaplitigation – not cheap
copyrights: best practicescopyrights: best practices
use stuff you own or have use stuff you own or have licensed (incl. creative licensed (incl. creative commons)commons)
make sure you own stuff youmake sure you own stuff you’’re re paying for – images, code, paying for – images, code, narrative (agreements!)narrative (agreements!)
use Copyright Office process for use Copyright Office process for source code registrationsource code registration
the endthe end
egrumbles@adamsmonahan.com
www.ernestgrumbles.comwww.ernestgrumbles.com
651.491.3643651.491.3643