PROTECTING YOUR
BUSINESS IDEAS
Mary Juetten, Founder & CEO

AZBIA Open House January 15, 2014
"TRAKLIGHT", "ID YOUR IP", "...
Got Intellectual Property?
Why Care…
• IP theft costs US companies $250

billion annually
• 100% of all companies have IP
...
What is IP?
•
•
•
•

Patents (utility & design)
Copyright ©
Trademark/Service mark TM SM ®
Trade secrets – unsung heroes

...
Case Studies
IP Awareness Assessm ent

•
•
•
•
•

Inventor
Website
Software
Restaurant
Traklight!

2/ 26/ 13 11:42 AM

IP ...
IP Misconceptions
• IP is just for Tech Startups or Tech companies
& Patents are the only IP for inventors
• Trade secrets...
Start on the Right Trak
Do NOT start with creating a:
Campaign
Pitch
or
Business Plan
THIS APPLIES TO ALL FINANCING!
Discl...
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 Rig...
WHEN: Key Dates to Remember
• Date of Idea/Invention (First to Invent  First
INVENTOR to file)
• Date of Use
• Date of Fi...
WHAT: Business Plan/Funding
Presentation
•
•
•
•
•
•

Idea
URL
Name
Know how
Employees
Contractors
Strategies to Protect IP
• Do it Yourself:
– USPTO.gov
– Copyright.gov

• Hire a Professional:
– Attorney, Consultant, Leg...
Ignorance is NOT a Defense
Be Careful:
Video
Copy
Business Plans
Questions?

www.traklight.com

Mary Juetten
mejuetten@traklight.com
@traklight
Equity Issues

LLC

VS.

CORP

VESTING
Operating Agreement Must Haves
Buy-Sell Language
 Provisions for Death or Divorce
 Different Classes of Units
 “Profits...
Secure Your IP
Technical Co-Founder
Outsourcing Your
Development
In-House Development
Working with a
Technical Co-Founder?
Technology Assignment Agreement
or Exclusive License
• Broad as possible
• Terms shou...
Outsourcing Your Development?
Development, Consulting or Work Made
for Hire Agreements
Work Made for Hire but Cover Your B...
In-House Development?
To Non-Compete or not to
Non-Compete
Proprietary Rights
Agreements
Other Assistance


Technology Advisors



Advisory Board Members
Safeguard Your IP


Actively protect it



Trademarks



Patents



Trade Secret Protection



IP Identification and ...
Find the Right Lawyer
INTERVIEW AT LEAST THREE
 EXPERIENCE—TECHNICAL,
BUSINESS
 PHILOSOPHY
 ASK FOR REFERRALS
 FLEXIBI...
Resources
 Orrick's

Start-up Forms

http://www.orrick.com/Practices/Emerging-Companies/Startup-Forms/Pages/Forms-Technol...
The Provisional Application

Ronald J. Kisicki, Esq.
275 N. GateWay Drive
Phoenix, AZ 85034
602-633-1793

© 2014 Woods Ovi...
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
...
Option 2 – File Provisional Application
Advantages:
•Better (?) documentation of invention
•Invention is held in secrecy
•...
Content
Must Include:
•Specification that conforms to the disclosure requirements of
35 U.S.C. §112
•
•

Enablement
Writte...
Other Points
• In order to rely on the filing date of the provisional,
the non-provisional must:
•
•
•

•

be filed within...
Questions?
Copyrights & Trademarks
Ruth Carter, Esq.
@rbcarter
Carter Law Firm, PLLC
CarterLawAZ.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 descrip...
Copyright Rights
•
•
•
•
•
(cc) Crystl

Copy
Distribute
Display
Perform
Create Derivative
Works
Trademarks

(cc) avlxyz, iPyo, marcopako
Purpose of Trademarks
Protect
Consumers

Inform them
about the source
& quality of
goods & services
(cc) lululemon athleti...
What’s the Difference?

TM
Cautionary Tale

(cc) MrSchuReads

(cc) comedy_nose
More Information
Traklight
Traklight.com

Carter Law Firm, PLLC
CarterLawAZ.com
ruth@carterlawaz.com
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AZBIA & Traklight present "New Year, New Business" Open House

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Traklight organized the New Year New Business event open house with CEI and AZBIA.
5 presenters shared on their legal expertise in the area of intellectual property. Patents, protection, copyrights, business formation, contracts and identification of intellectual property permeated throughout the presenter's discussions.

Russ Yelton (President and CEO of NACET) & Joann McMaster (President of AZBIA)

Mary Juetten (Founder and CEO of Traklight

Juliet Peters (Founding Partner of Becker Peters, PLLC)

Ron Kisicki (registered Patent Attorney and Partner with Woods Oviatt Gilman, LLP)

Ruth Carter (Owner and Attorney of Carter Law Firm, PLLC)

Published in: Education, Business
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  • 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.
  • Infringement is real issues
  • Please add in Jill properly…I tried!
  • AZBIA & Traklight present "New Year, New Business" Open House

    1. 1. 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.
    2. 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.
    3. 3. What is IP? • • • • Patents (utility & design) Copyright © Trademark/Service mark TM SM ® Trade secrets – unsung heroes NO legal advice provided!
    4. 4. Case Studies IP Awareness Assessm ent • • • • • Inventor Website Software Restaurant Traklight! 2/ 26/ 13 11:42 AM IP category Trademarks IP Strategies & Best Practices ` 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 to return and resume your assessment session in case you cannot finish it in one sitting. This will 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 Page 1 of 2
    5. 5. 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
    6. 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.
    7. 7. Strategies: 1.ID IP 2.Protect IP ✔ WHY WHO WHAT WHEN WHERE
    8. 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. 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
    10. 10. WHAT: Business Plan/Funding Presentation • • • • • • Idea URL Name Know how Employees Contractors
    11. 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. 12. Ignorance is NOT a Defense Be Careful: Video Copy Business Plans
    13. 13. Questions? www.traklight.com Mary Juetten mejuetten@traklight.com @traklight
    14. 14. Equity Issues LLC VS. CORP VESTING
    15. 15. Operating Agreement Must Haves Buy-Sell Language  Provisions for Death or Divorce  Different Classes of Units  “Profits Interest” Language  Valuation Formula  Deadlock Provision 
    16. 16. Secure Your IP Technical Co-Founder Outsourcing Your Development In-House Development
    17. 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. 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
    19. 19. In-House Development? To Non-Compete or not to Non-Compete Proprietary Rights Agreements
    20. 20. Other Assistance  Technology Advisors  Advisory Board Members
    21. 21. Safeguard Your IP  Actively protect it  Trademarks  Patents  Trade Secret Protection  IP Identification and Storage Product Traklight at www.traklight.com
    22. 22. Find the Right Lawyer INTERVIEW AT LEAST THREE  EXPERIENCE—TECHNICAL, BUSINESS  PHILOSOPHY  ASK FOR REFERRALS  FLEXIBILITY  VALUE 
    23. 23. Resources  Orrick's Start-up Forms http://www.orrick.com/Practices/Emerging-Companies/Startup-Forms/Pages/Forms-Technology.aspx  Gunderson Dettmer LLP http://bit.ly/QVgPb3
    24. 24. The Provisional Application Ronald J. Kisicki, Esq. 275 N. GateWay Drive Phoenix, AZ 85034 602-633-1793 © 2014 Woods Oviatt Gilman LLP
    25. 25. First Inventor to File A File B File
    26. 26. First Inventor to File A P.D. File B File
    27. 27. 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
    28. 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. 29. 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.)
    30. 30. 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.
    31. 31. Questions?
    32. 32. Copyrights & Trademarks Ruth Carter, Esq. @rbcarter Carter Law Firm, PLLC CarterLawAZ.com
    33. 33. DISCLAIMER (cc) swimparallel
    34. 34. Copyrights (cc) pdinnen
    35. 35. Minimum Requirements Original work of authorship fixed in a tangible medium (cc) wwarby
    36. 36. Copyright in Business • Website content – verbiage, photos, videos • Software code • Marketing materials • Product descriptions
    37. 37. Copyright Rights • • • • • (cc) Crystl Copy Distribute Display Perform Create Derivative Works
    38. 38. Trademarks (cc) avlxyz, iPyo, marcopako
    39. 39. Purpose of Trademarks Protect Consumers Inform them about the source & quality of goods & services (cc) lululemon athletica
    40. 40. What’s the Difference? TM
    41. 41. Cautionary Tale (cc) MrSchuReads (cc) comedy_nose
    42. 42. More Information Traklight Traklight.com Carter Law Firm, PLLC CarterLawAZ.com ruth@carterlawaz.com
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