Date post: | 21-Oct-2014 |
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PROTECTING YOUR BUSINESS IDEAS
Mary Juetten, Founder & CEO
AZBIA Open House January 15, 2014"TRAKLIGHT", "ID YOUR IP", "IP VAULT", and "IP CLOUD" are registered trademarks of The PIP Vault, LLC. © MMXIII The PIP Vault, LLC. All Rights Reserved.
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.
What is IP?
• Patents (utility & design)• Copyright ©• Trademark/Service mark TM SM ®• Trade secrets – unsung heroes
NO legal advice provided!
• Inventor• Website • Software• Restaurant• Traklight!
`
Case Studies
IP Misconceptions
• IP is just for Tech Startups or Tech companies & Patents are the only IP for inventors
• Trade secrets are the easiest to protect because there is no registration.
• You can copy anything without a copyright ©
• You can copyright an idea.
• Domain = TM
• If I pay for it, I own it.
• Patents means right to make or sell
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.
Strategies:1.ID IP 2.Protect IP
WHY WHO
WHAT
WHEN
WHERE
✔
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
• Date of Idea/Invention (First to Invent First INVENTOR to file)
• Date of Use• Date of Filing• Date of Conversion• Renewals
WHEN: Key Dates to Remember
• Idea• URL• Name• Know how• Employees• Contractors
WHAT: Business Plan/Funding Presentation
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
Ignorance is NOT a Defense
Be Careful:
Video
Copy
Business Plans
Questions?
Mary Juetten
@traklight
www.traklight.com
Equity Issues
LLC
VESTING
CORPVS.
Buy-Sell Language Provisions for Death or Divorce Different Classes of Units “Profits Interest” Language Valuation Formula Deadlock Provision
Operating Agreement Must Haves
Technical Co-Founder
Outsourcing Your Development
In-House Development
Secure Your IP
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
Working with a Technical Co-Founder?
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
Outsourcing Your Development?
To Non-Compete or not to Non-Compete
Proprietary Rights Agreements
In-House Development?
Technology Advisors
Advisory Board Members
Other Assistance
Actively protect it
Trademarks
Patents
Trade Secret Protection
IP Identification and Storage Product Traklight at www.traklight.com
Safeguard Your IP
INTERVIEW AT LEAST THREE EXPERIENCE—TECHNICAL,
BUSINESS PHILOSOPHY ASK FOR REFERRALS FLEXIBILITY VALUE
Find the Right Lawyer
Resources
Orrick's Start-up Forms http://www.orrick.com/Practices/Emerging-Companies/Startup-Forms/Pages/Forms-Technology.aspx
Gunderson Dettmer LLPhttp://bit.ly/QVgPb3
The Provisional Application
Ronald J. Kisicki, Esq.
275 N. GateWay Drive
Phoenix, AZ 85034
602-633-1793
© 2014 Woods Oviatt Gilman LLP
First Inventor to File
A
File
B
File
First Inventor to File
A
P.D. File
B
File
Option 1 – Public Disclosure
Advantages:• Easy• Inexpensive
Disadvantages:• 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
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
Content
Must Include:•Specification that conforms to the disclosure requirements of 35 U.S.C. §112
• 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.)
Other Points
• In order to rely on the filing date of the provisional, the non-provisional must:
• 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.
Questions?
Copyrights & Trademarks
Ruth Carter, Esq.@rbcarter
Carter Law Firm, PLLCCarterLawAZ.com
DISCLAIMER
(cc) swimparallel
Copyrights
(cc) pdinnen
Minimum Requirements
Original work of authorship
fixed in a tangible medium
(cc) wwarby
Copyright in Business• Website content – verbiage,
photos, videos• Software code• Marketing materials• Product descriptions
Copyright Rights• Copy• Distribute• Display• Perform• Create Derivative
Works
(cc) Crystl
Trademarks
(cc) avlxyz, iPyo, marcopako
Purpose of TrademarksProtect Consumers
Inform them about the source & quality of goods & services
(cc) lululemon athletica
What’s the Difference?
TM ®
Cautionary Tale
(cc) MrSchuReads (cc) comedy_nose