Set Up Your Start-Up Aristeidis Papathanasiou Emmanuel Tavlas Set Up Your Start-Up
Set Up Your Start-Up Today’s Agenda Knowing and protecting your intangible assets I. From Incorporation to Intellectual Property A company as a vehicle carrying Intellectual Property assets II. The value of Intellectual Property Intellectual Property as the foundation for market dominance III. Protection & costs From application to registration IV. Intellectual property rights & Software Protection regime V. Some of the mistakes start-ups usually make … you should avoid making VI. Conclusions + a final advice
Set Up Your Start-Up A company as a vehicle carrying Intellectual Property assets I. FROM INCORPORATION TO INTELLECTUAL PROPERTY
Set Up Your Start-Up A company: a Intangible assets represent: vehicle carrying •the majority of the value, both tangible & •the competitive advantages, intangible assets •the goodwill of a start-up company & usually •come out of ideas, •created through time and effort, •do not have a physical form; •but still have to be materially fixed in order to qualify as Intellectual Property Rights (IPRs)
Set Up Your Start-Up What Intellectual IPRs include: Property Rights • trade or commercial names (“εμπορική επωμυμία”), (IPRs) or • trade marks (“εμπορικά σήματα”), • copyright (“πμευματική ιδιοκτησία”), “Δικαιώματα • patents (“διπλώματα ευρεσιτεχμίας”), Διαμοητικής • Industrial designs (“βιομηχαμικά σχέδια”) , Ιδιοκτησίας” in Greek include? but also confidential / classified • formulas & practices, • processes & instruments, • patterns & compilations of information best known as trade secrets (“εμπορικά απόρρητα”)
Set Up Your Start-Up Intellectual Property as the foundation for market dominance II. THE VALUE OF INTELLECTUAL PROPERTY
Set Up Your Start-Up Intellectual Property Rights (IPRs) create market value & revenues • the foundation for market dominance and continuing profitability of leading corporations, • the key objective in mergers and acquisitions and • the main object of license agreements. .
Set Up Your Start-UpSet Up Your Start-Up INTELLECTUAL PROPERTY = COMPANY VALUE • What are the IPRs used in the business? • What is their value (and hence level of risk)? As a result : • Who owns it (could I sue or could someone sue me)? • first IP assets need to be • How may it be better identified and then exploited (e.g. licensing in • tailored to the specific or out of technology)? needs of each entrepreneur. • At what level do I need to insure the IPR risk?
Set Up Your Start-Up From application to registration III. PROTECTION & COSTS
Set Up Your Start-Up COPYRIGHT Copyright is awarded to original works of expression, usually without any formalities. Copyright, other than literary and artistic works, also include software & databases.
Set Up Your Start-Up COPYRIGHT • Copyright laws protect the form of expression of an idea, but not the idea itself. • Protection exists from the time an original idea is materially fixed • and lasts and up to seventy (70) years from the death of the creator. • Originality means that a work has been created independently and is the personal expression of the author.
Set Up Your Start-Up COPYRIGHT – Examples of protected works Literary works (novels, poems, plays, newspapers, films, musical compositions and even choreographies). Artistic works (paintings, drawings, photographs and sculptures, architectural plans, advertisements, maps and technical drawings).
Set Up Your Start-Up COPYRIGHT – Registration • No registration in an official registry or database in order for an original work to be protected, at least in Greece. ADVICE: file it before a notary public (“συμβολαιογράφος”) so that the date of creation of the work can be proved, given that the cost is low.
Trademarks, patents & designs “Industrial property rights” Set Up Your Start-Up
Set Up Your Start-Up TRADEMARKS Trade marks are distinctive signs indicating the commercial origin of goods & services.
Set Up Your Start-Up ΤRADEMARKS A trademark usually consists of • a word part, • a logo, • a design or • all these together. • Microsoft
Set Up Your Start-Up TRADEMARKS Registration Choose a word or a logo that: is not directly descriptive of the product or service. e.g. register an apple design, or the word “apple” for a business that sells apples.
Set Up Your Start-Up TRADEMARKS Registration Choose a word or a logo that: is not a geographical term (e.g. Thessaloniki).
Set Up Your Start-Up TRADEMARKS Registration Choose a word or a logo that is not: deceptive; offensive; a state emblem.
Set Up Your Start-Up TRADEMARKS Registration Choose a word or a logo that: should not bring in mind a previous mark. e.g. BAHOO for internet search engine (misspelling will not qualify for protection).
Set Up Your Start-Up TRADEMARKS Registration Choose a word or a logo that: consists of a made-up name (i.e. a "fanciful" name) or word, that has no meaning and cannot be found in a dictionary. Very strong trademarks such as KODAK or GOOGLE had no pre-existing meanings.
Set Up Your Start-Up TRADEMARKS How long does a trademark last? Trademark protection is perpetual as long as you renew your mark every 10 years by paying renewal fees. ……………
Set Up Your Start-Up TRADEMARKS Should I file a Greek, European on International TM? EU mark less bureaucratic, preferable if you do business in more than 2 EU countries.
Set Up Your Start-Up TRADEMARKS How much will it cost? Depends on the number of categories of products that you seek registration for. Indicative prices: Greece: 500 euros EU: 1200 euros.
Set Up Your Start-Up TRADEMARKS What do you think about these marks?
Set Up Your Start-Up TRADEMARKS Some Hints It is advisable to ask for professional advice in order to avoid a possible rejection of your mark. You can also request an availability search before the mark is filed (maybe even before designed), so as to be sure than no identical or similar marks exist.
Set Up Your Start-Up PATENTS Patents are “diplomas” granted for specific period of time (20 years) for inventions that present novelty, involve an inventive step and have an industrial application. For 3D devices solving technical problems, utility models can be worth considering too. They have a shorter term of protection (6 - 15 years) and less stringent patentability requirements.
Set Up Your Start-Up PATENTS Basics Α patent gives the to the right holder a monopoly to exploit the invention for twenty years. Requirements: 1) worldwide novelty, 2) inventive step, 3) industrial application.
Set Up Your Start-Up PATENTS How does it look like? Something like a “diploma” granted to the inventor(s). Includes: •summary of the invention •reference to the existing state of the art (what is already publicly known in the specific industry field) •explanation of the novel element •patent claims (steps of the invention).
Set Up Your Start-Up PATENTS How does it look like?
Set Up Your Start-Up PATENTS How does it look like?
Set Up Your Start-Up PATENTS Should I file a patent before the Greek or the European Patent Office? A European Patent is much stronger than a patent that is only granted after a check on formalities, like a Greek patent. However, a Greek Patent is much easier to grant !
Set Up Your Start-Up PATENTS How much does it cost? o Patent application in Greece 1500 EUR o Patent application before the EPO 3000 EUR [indicative prices including official fees and attorney costs]. Do not forget escalating annual fees…
Set Up Your Start-Up PATENTS Can a patent filing lead me to court? A competitor may request the cancellation of your patent in court. However, patent litigation is a long procedure as there are major delays in court proceedings, at least in Greece.
Set Up Your Start-Up A design is defined as "the appearance of the whole INDUSTRIAL or a part of a product resulting from features such DESIGNS as : • lines, • contours, • colours, • shape, • texture, • materials of the product itself, • the product’s ornamentation. Designs may be protected if: • they are novel (that is if no design identical or differing only in immaterial details has been made available to the public); • they have individual character (that is the "informed user" would find the overall impression different from other designs which are available to the public.)
Set Up Your Start-Up INDUSTRIAL Where a design forms part of a more complex product, the novelty and individual character DESIGNS of the design are judged on the part of the design which is visible during normal use. Designs are not protected insofar as their appearance is wholly determined by their technical function, or by the need to interconnect with other products to perform a technical function (the "must-fit" exception). However modular systems such as Lego or Meccano may be protected.
Set Up Your Start-Up Protection regime IV. IP RIGHTS & SOFTWARE
Set Up Your Start-Up COPYRIGHT – Software What is protected ? • the computer program, in both human-readable and machine-executable form, and the related manuals are eligible for copyright protection, but • the methods and algorithms within a program are not protected expression, • source code and object code are protected against literal copying.
Set Up Your Start-Up COPYRIGHT – DATABASES Databases may also be protected under copyright. A database is an organized collection of data for one or more purposes, usually in digital form. It is protected under copyright laws and it cannot be copied partly or as a whole.
Set Up Your Start-Up PATENTS Software related inventions • 85+ countries permit the patenting of software related inventions, at least to some degree. • The European Patent Convention excludes "computer programs as such" from patentability. • But, recent case law from the European Patent Office has provided a definition, which allows patent claims on what they call "program products"
Set Up Your Start-Up PATENTS Software related inventions • “Software is patentable if the application of the software has a technical effect.” • In the words of EPO the technical effect must go beyond the "normal" physical interactions between program and computer. If such an effect can be found, the program is not excluded and hence a patentable invention. • A technical effect can be, for example, a reduced memory access time, a better control of a robotic arm or an improved reception and/or decoding of a radio signal.
Set Up Your Start-Up V. SOME OF THE MISTAKES START-UPS USUALLY MAKE … and you should avoid doing
Set Up Your Start-Up IP MISTAKE No. 1 Protecting your IPRs as an after the fact tactic. Protecting your startups intellectual property should be a strategy not an after the fact tactic. You need a plan for trademarks, copyright, trade secrets, contracts/NDA’s and patents before you get funded, otherwise your intellectual property may be at stake.
Set Up Your Start-Up IP MISTAKE No. 2 IP should not be contaminated at origination. Incorrectly presuming that originating the idea means owning it, can be very costly for the company. However, if the idea was originated or worked on in the course of working at a prior employer, the prior employer could potentially assert rights to the intellectual property.
Set Up Your Start-Up IP MISTAKE No. 3 Not securing rights from contracted entities. Better have an agreement with contractors and outsourced providers to address the ownership of intellectual property rights. If not it may result in disputes over ownership and subsequent uses of the developed technology and corresponding intellectual property.
Set Up Your Start-Up IP MISTAKE No. 4 Partners or co-inventors agree to the ownership of intellectual property rights by signing a written agreement. Complexities and significant unintended consequences. Joint ownership: examine the objectives of the parties Sole ownership & licensing : could these objectives be accomplished more simply ?
Set Up Your Start-Up IP MISTAKE No. 5 IP should not be publicly disclosed before deciding and executing on a strategy. Examples of risky disclosures: • Presentations at conferences • Research abstracts presented in a public forum •Posting of information on websites. • Publications. •Meetings with company representatives or colleagues.
Set Up Your Start-Up IP MISTAKE No. 6 Relying only on one type of intellectual property for protection For example, software can be protected not only by copyright, but also by patent, trade secret and know-how.
Set Up Your Start-Up + a final advice V. CONCLUSIONS
Set Up Your Start-UpSet Up Your Start-Up Be careful when requesting professional advice! 4 questions before hiring a law firm: Do you work extensively with start-ups? + final advice • Are you a “full service” law firm? Identify your needs & know • Are you the partner that will be doing my work? what you are aiming at, otherwise you will get • How much will this cost and overcharged. are you flexible on billing?