Your SlideShare is downloading. ×
0
Series 1

Intellectual Property and Your Start-Up
Company
By:

Attorney Advertising

Wayne Kennard
Josh Fox
Three-Part IP Series
(1) Intellectual Property and Your Start-Up Company
(2) Practical on Patents and Trade Secrets
 How ...
What IP is of Concern?
Every start-up company has IP that must be properly
handled:
 Patentable invention (commonly thoug...
When Should We Think About the IP?
Pre- or Post-Company Formation?
 The founders should determine, as much as possible, t...
Founder Equity Contributions and IP
Founder Contributions for Equity
 Money
 Ideas
 Potentially Registrable IP
– Patent...
Outside Investment and IP
Premise: Company vision and ideas (management), and IP
(technology) drive outside investment.
Ou...
Equity, Board Membership, and IP
The Certificate of Incorporation, By-laws, and amount
of stock that is distributed, along...
Advisory Board Compensation and IP
Advisory Board compensation
 Money
– Hardest for a start-up
– Impact on IP?

 Equity
...
Agreements
Employee agreements and IP (See Sample)
 IP created and developed on company time using company
resources
– “W...
Agreements
Joint Venture/Collaborative agreements and IP
 Protect contributed IP
 Know technology state in the area of i...
Agreements
Nondisclosure/Confidentiality agreements and IP (See
Samples)
 Start-ups will use and see this type of agreeme...
The Next Phase of the Company and IP
IP Enforcement
 Expensive and avoid at all costs (if possible)

Out-Licensing IP
 R...
The Next Phase of the Company and IP
Company dissolution
 IP has value
 Distribution according to determination at compa...
Questions?
Wayne Kennard
617-526-6183
wayne.kennard@wilmerhale.com
Josh Fox
781-966-2007
joshua.fox@wilmerhale.com

Wilmer...
Upcoming SlideShare
Loading in...5
×

Intellectual Property and Your Start-Up Company

525

Published on

Explores what IP you should be concerned with, when to consider it, and IP related to founder equity, outside investment, board membership and agreements.

Published in: Business
0 Comments
0 Likes
Statistics
Notes
  • Be the first to comment

  • Be the first to like this

No Downloads
Views
Total Views
525
On Slideshare
0
From Embeds
0
Number of Embeds
2
Actions
Shares
0
Downloads
10
Comments
0
Likes
0
Embeds 0
No embeds

No notes for slide

Transcript of "Intellectual Property and Your Start-Up Company"

  1. 1. Series 1 Intellectual Property and Your Start-Up Company By: Attorney Advertising Wayne Kennard Josh Fox
  2. 2. Three-Part IP Series (1) Intellectual Property and Your Start-Up Company (2) Practical on Patents and Trade Secrets  How to’s, Dos, and Don’ts (3) Practical on Copyrights and Trademarks  How to’s, Dos, and Don’ts © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 2
  3. 3. What IP is of Concern? Every start-up company has IP that must be properly handled:  Patentable invention (commonly thought of)  Trademarks (commonly thought of)  Copyrights  Trade secrets © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 3
  4. 4. When Should We Think About the IP? Pre- or Post-Company Formation?  The founders should determine, as much as possible, the following before the enterprise is formed: – The IP by type being contributed by each of the founders: the most important are patentable inventions, copyright material, and trade secrets – The IP to be developed by the enterprise and when: first product or some future product – When to make founder contributed IP company IP © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 4
  5. 5. Founder Equity Contributions and IP Founder Contributions for Equity  Money  Ideas  Potentially Registrable IP – Patentable subject matter – Copyright material  Trade secrets for the enterprise What about trademarks?  Value based on “use” © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 5
  6. 6. Outside Investment and IP Premise: Company vision and ideas (management), and IP (technology) drive outside investment. Outside investment types for early-stage companies: Friends and Family Angels Venture Capitalists Control of IP: Each of the above, if sophisticated, will not expect to have direct control of, or any claim to, company IP. However, none of the above will invest unless the company owns its IP. Some overly-aggressive investors may attempt to include a “claw-back” on IP, a means to obtain ownership of IP, under certain specified circumstances, such as liquidation or dissolution of the company. © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 6
  7. 7. Equity, Board Membership, and IP The Certificate of Incorporation, By-laws, and amount of stock that is distributed, along with any other contracts agreed to by stockholders, will determine board membership  The board controls the assets of the company, including use and disposition of IP  Unintentional loss of board control by founders to other stockholders would result in loss of control of company IP Board member equity: Options to purchase common stock for independent directors as compensation for their services (not investor-directors or founders) © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 7
  8. 8. Advisory Board Compensation and IP Advisory Board compensation  Money – Hardest for a start-up – Impact on IP?  Equity – Easiest for a start-up – Type of Equity Options to purchase common stock – Impact on IP? © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 8
  9. 9. Agreements Employee agreements and IP (See Sample)  IP created and developed on company time using company resources – “Work for Hire” and “Assigned” to the Company  Confidentiality provisions Third Party/Vendor agreements and IP  The company “owns” IP it paid to have developed – “Work for Hire” and “Assigned” to the Company  Company can consider licensing back certain aspects of what was developed with limitations © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 9
  10. 10. Agreements Joint Venture/Collaborative agreements and IP  Protect contributed IP  Know technology state in the area of interest of the parties  If joint ownership of developed IP, start-up must consider relative size of its partner – Need protections in agreement © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 10
  11. 11. Agreements Nondisclosure/Confidentiality agreements and IP (See Samples)  Start-ups will use and see this type of agreement the most  Start-ups may find a potential investor reluctant to sign  2-4 pages  Key limitation is that whatever the start-up discloses under the NDA/CA cannot be used by the recipient for its benefit without the prior written consent of the start-up © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 11
  12. 12. The Next Phase of the Company and IP IP Enforcement  Expensive and avoid at all costs (if possible) Out-Licensing IP  Revenue generation  No warranties regarding IP Merger/Acquisition  Know the IP the company owns  Do not have equity distributed or agree to contractual restrictions, if possible, that would allow an outside investor to stop transaction © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 12
  13. 13. The Next Phase of the Company and IP Company dissolution  IP has value  Distribution according to determination at company formation © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 13
  14. 14. Questions? Wayne Kennard 617-526-6183 wayne.kennard@wilmerhale.com Josh Fox 781-966-2007 joshua.fox@wilmerhale.com Wilmer Cutler Pickering Hale and Dorr LLP is a Delaware limited liability partnership. WilmerHale principal law offices: 60 State Street, Boston, Massachusetts 02109, +1 617 526 6000; 1875 Pennsylvania Avenue, NW, Washington, DC 20006, +1 202 663 6000. Our United Kingdom offices are operated under a separate Delaware limited liability partnership of solicitors and registered foreign lawyers authorized and regulated by the Solicitors Regulation Authority (SRA No. 287488). Our professional rules can be found at www.sra.org.uk/solicitors/codeof-conduct.page. A list of partners and their professional qualifications is available for inspection at our UK offices. In Beijing, we are registered to operate as a Foreign Law Firm Representative Office. This material is for general informational purposes only and does not represent our advice as to any particular set of facts; nor does it represent any undertaking to keep recipients advised of all legal developments. Prior results do not guarantee a similar outcome. © 2014 Wilmer Cutler Pickering Hale and Dorr LLP © 2014 Wilmer Cutler Pickering Hale and Dorr LLP WilmerHale 14
  1. A particular slide catching your eye?

    Clipping is a handy way to collect important slides you want to go back to later.

×