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…
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.
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.
Got Intellectual Property?Why Care…• IP theft costs US companies $250billion 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 onyour Balance Sheet• Exclude competition; Attractinvestment (incl. crowdfunding);Leverage & license• Avoid IP loss, infringement, orbusiness failureDisclaimer: This is intended to be general information. Nothing in this presentation constituteslegal advice. Please consult with an attorney before making any intellectual property protectiondecisions.
Strategies toStep 1: ID IP Step 2: Protect IPWHYWHOWHATWHENWHERE✔
WHO: IP Ownership Challenges• Multiple Inventors• Who you are? Employee, Student?• Proper Assignment of IP Rights – personal versuscompany versus school• Assume that Ownership automatically extends outsidethe US
• Date of Idea/Invention (First to Invent FirstINVENTOR to file)• Date of Use• Date of Filing• Date of Conversion• RenewalsWHEN: Key Dates to Remember
Strategies to Protect IPFiling:Patent/TM/Copyright $$$$$ORSecret $
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
Be Prepared - Resources• CfPA, CfIRA• Crowdfundingroadmap.comAnnual Oct 14th – 16thConvention & Bootcamp• Crowdfundcast.com – podcast• Getting Started withCrowdfunding Investing forDummies in a Day• Crowfunding Hatchery• Traklight.com/IP Cloud – freeresources
• Incubators & Accelerators• Mentors• SBDC• SCORE• Startup Arizona, America• Competitions – ACAInnovation Challenge• Resources – TrakLight.com- IP CloudStrategies toStep 1: ID IP Step 2: Protect IP
Questions?Mary Juettenmejuetten@traklight.com@traklightIDENTIFY. PROTECT. SUCCEED.www.traklight.comText IPHELPU to 72727 for the latest white paperOr visit bit.ly/IPHELPU