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Leverage Your IP Assets

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Melissa Jaffe and Mary Juetten tell you how to leverage your IP assets. 90% of a startup's value is intellectual property and many are unaware of what it is. Once you understand IP you can add value ...

Melissa Jaffe and Mary Juetten tell you how to leverage your IP assets. 90% of a startup's value is intellectual property and many are unaware of what it is. Once you understand IP you can add value and worth to your business.

Melissa is the owner and principle of a boutique law firm. She has offices in California, Oregon, and Washington.

Mary is the founder and CEO of Traklight. Traklight provides the only self-guided software platform to help you create an IP Strategy.

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Leverage Your IP Assets Leverage Your IP Assets Presentation Transcript

  • Leverage Your Assets Melissa Jaffe Mary Juetten Presented by
  • Entrepreneurs’ World
  • Innovation Capture is Hard
  • 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 > 90% 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!
  • 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.
  • 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
  • • Idea • URL • Name • Know how • Employees • Contractors Startup Info
  • 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 Images Music
  • READ READ READ Read License & Permission to Use
  • Leveraging IP The lifecycle of contracts regarding Intellectual Property (IP) between businesses. Business + IP © 2014 Law Offices of Melissa B. Jaffe, PC Licensing:
  • Leveraging IP BUSINESS: “Someone Doing Something For Someone Else In Exchange for Something” Facebook: Tao of Business Law © 2014 Law Offices of Melissa B. Jaffe, PC
  • Leveraging IP ARE YOU IN BUSINESS? - Commitment - Finances - Goals/ Exit Strategy © 2014 Law Offices of Melissa B. Jaffe, PC
  • Leveraging IP Business Mistake #1: Failure to incorporate Major benefit = Limitation on liability © 2014 Law Offices of Melissa B. Jaffe, PC
  • Leveraging IP Business Mistake #2: Improper entity - How many people are joining together? - Are appropriate documents drafted & filed (i.e. Buy-Sell Agreement; Operating Agreement, etc.) © 2014 Law Offices of Melissa B. Jaffe, PC
  • Leveraging IP Business Mistake #2: Improper entity & failure to register with state and local authorities - Default = Partnership - LLC = typically the most flexible - (C) corporation often most restrictive © 2014 Law Offices of Melissa B. Jaffe, PC
  • Leveraging IP Business Mistake #3: **S-L-O-W D-O-W-N** - Brainstorm potential markets and uses - Be honest with your emotional and energetic commitments - Stay flexible - Create an endeavor that will work for YOU © 2014 Law Offices of Melissa B. Jaffe, PC
  • Leveraging IP © 2014 Law Offices of Melissa B. Jaffe, PC Licensing Mistake #1: NO BOILERPLATE LICENSE! - You will not save money or time by using another company’s license.
  • Leveraging IP © 2014 Law Offices of Melissa B. Jaffe, PC Licensing Mistake #2: Failure to accurately determine value - Scope of media; - Scope of geography; - Value to bottom-line of potential licensee; - Scope of time
  • Leveraging IP © 2014 Law Offices of Melissa B. Jaffe, PC Licensing Mistake #3: No game plan/ strategy drafted into license agreements Solution: - Use “Phases” or Milestones to gauge success and - Allow for easy termination - Tie payments to desired outcomes as much as possible
  • Leveraging IP © 2014 Law Offices of Melissa B. Jaffe, PC Licensing Agreements: PAYMENT OPTIONS: - Lump-Sum upfront payment; - Front loaded payment; - Royalty; - Performance-based; - Cascading/ Waterfall provision; - Etc.
  • Leveraging IP © 2014 Law Offices of Melissa B. Jaffe, PC Licensing Agreements: PAYMENTS: - If royalty based, include Accounting provision; - If International, be certain to state conversion or type of currency (ie US dollars) - Provide for bond if necessary after due diligence
  • Leveraging IP © 2014 Law Offices of Melissa B. Jaffe, PC Licensing Agreements: Exclusive v Non-Exclusive: - Exclusive is more “valuable”; - If permitted to sub-license, be certain to include specific indemnification provision
  • Licensing BUSINESS: “Someone Doing Something For Someone Else In Exchange for Something” © 2014 Law Offices of Melissa B. Jaffe, PC
  • Licensing Example 1: Idea: water bottle nipple attachment for babies © 2014 Law Offices of Melissa B. Jaffe, PC
  • Licensing Market: - Young parents - Caretakers - Grandparents - People shopping for moms (“gift market”) Etc. - Other babies? Gag gifts? © 2014 Law Offices of Melissa B. Jaffe, PC
  • Licensing Potential Licensees: - Gerber - Green Sprouts - Evenflo - Gag gift developers - Others… © 2014 Law Offices of Melissa B. Jaffe, PC
  • Licensing Possible License Strategy: - Several licenses in different countries; - Performance-based (i.e. if achieve milestone of $100k in revenue by end of year 1, then automatic license for another year. If under $100k, termination with 90 days notice by Licensor. © 2014 Law Offices of Melissa B. Jaffe, PC
  • Leveraging IP © 2014 Law Offices of Melissa B. Jaffe, PC Customized Packages: Example 1 - EIN - TM Review - 2 hr. consult - 1 Agreement draft - Redlines Example 2 - Operating Agreements, etc. - Business Plan Review - Strategic Plan - Additional Contract - Redlines CONTACT: 503.780.6565 WWW.MBJAFFELAW.COM
  • Leveraging IP © 2014 Law Offices of Melissa B. Jaffe, PC THANK YOU! Facebook: Law Offices of Melissa B. Jaffe, PC Phone:503.780.6565 Email: Melissa@mbjaffelaw.com @MelissaBJaffe
  • Questions? mejuetten@traklight.com @traklight IDENTIFY. PROTECT. SUCCEED. www.traklight.com Mary Juetten