IP Law for Startups and Emerging Companies

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Slide deck used by David A. Boag, CEO @ BOAG | LAW, PLLC, to give a talk to NYEBN audience at WeWork Charging Bull, NYC, on May 14

Slide deck used by David A. Boag, CEO @ BOAG | LAW, PLLC, to give a talk to NYEBN audience at WeWork Charging Bull, NYC, on May 14

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  • 1. IP LAW FOR STARTUPS AND EMERGING COMPANIES WeWork Charging Bull  May 14, 2014www.boagip.com
  • 2. © 2014 BOAG | LAW, PLLC Rights given to persons over the creations of their minds. -WIPO Intellectual Property
  • 3. © 2014 BOAG | LAW, PLLC Intellectual Property A bundle of rights granted for a new, creative or distinctive idea or expression.
  • 4. © 2014 BOAG | LAW, PLLC Policy Justification  Net Social Welfare Theory  Natural Right Theory Determination that some social good comes from awarding exclusive rights to inventors and authors.
  • 5. © 2014 BOAG | LAW, PLLC THE BIG THREE
  • 6. © 2014 BOAG | LAW, PLLC The Big Three: Patent The right to exclude others from making, using, selling, or importing the invention described in the patent’s claims. Not a right to practice.
  • 7. © 2014 BOAG | LAW, PLLC The Big Three: Trademark A symbol that identifies and distinguishes the source of the goods of one party from those of others.
  • 8. © 2014 BOAG | LAW, PLLC The Big Three: Copyright The exclusive right of an author to exploit a work, including making copies, publicly performing the work, and preparing derivative works.
  • 9. © 2014 BOAG | LAW, PLLC Comparison Patent Trademark Copyright Term 20 years from (effective) filing Indefinite (Use) Life of the author + 70* Rights Vest Issuance Use in commerce Fixation Cost High $5,000- Low <$1,000 Very Low <$300
  • 10. © 2014 BOAG | LAW, PLLC The Theory of Everything Patent Trademark Copyright Criteria Utility, novelty, non- obviousness Distinctive, capable of being an indicator of source, no LOC Originality and fixation Coverage Inventions or discoveries of any new process, machine, manufacture, or composition of matter Symbols used in commerce that indicate a source of origin Original works of authorship Exclusions Laws of nature, physical phenomena, abstract ideas Scandalous or disparaging subject matter; functional marks Ideas, functional aspects, gov’t works Infringeme nt Making, using, selling, offering for sale, or importing anything covered by a claim Likelihood of confusion Copying and substantial similarity
  • 11. © 2014 BOAG | LAW, PLLC Playing The Patent Game  302,948 patents issues in 2013  40,000 “software patents”  4,701 patent infringement suits filed in 2012  62% brought by NPEs  $29B in direct costs RPX Corporation
  • 12. © 2014 BOAG | LAW, PLLC Patents and Startups— Considerations  pique investor interest  tangibilization  protects early market share (fear)  BUT: expensive and may not be worth it
  • 13. © 2014 BOAG | LAW, PLLC Trademarks and Startups— Considerations  branding: protects business identity  national rights  puts others on notice  BUT: requires care and feeding
  • 14. © 2014 BOAG | LAW, PLLC STRATEGY
  • 15. © 2014 BOAG | LAW, PLLC Strategy I: Patents  Identify patent-worthy inventions  Core to business?  Alternatives available?  Aim for not just any patent, but a valuable one  Too specific, not valuable  Too broad, invalid
  • 16. © 2014 BOAG | LAW, PLLC Strategy II: Patents  File early  Statutory deadlines  First to file  File continuations and adapt
  • 17. © 2014 BOAG | LAW, PLLC Strategy III: Trademarks  Confirm availability early  Be distinctive  Take care of it:  Use it correctly (adjective)  Protect it  ™ and ®
  • 18. © 2014 BOAG | LAW, PLLC Strategy IV: Copyrights  Register important materials  source code, web site  Statutory damages  Registration required for infringement claim
  • 19. © 2014 BOAG | LAW, PLLC Strategy V: Design Patents  Ornamental  Inexpensive and fast  E.g., shoe design, smartphone, GUI, icon  Infringer’s profits
  • 20. © 2014 BOAG | LAW, PLLC TRAPS
  • 21. © 2014 BOAG | LAW, PLLC Trap 1: Premature Disclosure Must file within one year of your first public disclosure! Many foreign jurisdictions require “absolute novelty.”
  • 22. © 2014 BOAG | LAW, PLLC Trap 2: Casual Inventorship By default, an employee owns work done within the scope of employment! Use employment agreements.
  • 23. © 2014 BOAG | LAW, PLLC Trap 3: Freedom to Operate Avoid infringement of the rights of others. Confirm FTO before getting started.
  • 24. © 2014 BOAG | LAW, PLLC Trap 4: Bad Trademark Use Use your trademarks properly and consistently. Non-use or generic use can be deadly.
  • 25. © 2014 BOAG | LAW, PLLC Trap 5: © Fair Use Isn’t Always “Fair” Limited use for commentary, criticism, parody Look at purpose, nature, amount, impact
  • 26. © 2014 BOAG | LAW, PLLC Questions?