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Chad

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    Chad Chad Presentation Transcript

    • Intellectual Property Considerations for High Tech Startup Companies
      Presented by: Chad Walsh
    • Topics
      Mobile Employee Issues
      Identifying and Protecting Innovations
      Patent Process Primer for Founders and Executives
      The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
    • Mobile Employee Issues
      Trade Secrets
      Nonsolicitation
      Noncompetition
      The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
    • Trade Secrets
      What are Trade Secrets?
      Information – technical & business
      Economic value from not being generally known
      Reasonable efforts to maintain secrecy
      The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
    • Common Scenarios
      Mobile Employees
      Founders leave prior employer
      Company hires new employees
      Founder/Company share information with 3rd parties
      The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
    • Labor Code 2870: Employers in California typically own everything you do unless unrelated to current or anticipated research or development.
      Must make a “clean exit”
      Don’t start work until after you leave.
      Take NOTHING!!!!
      Show Independent Development – Keep records.
      Consider a waiver or deal with former Employer.
      Example: Pursuing exploration of opportunities in emerging markets.
      Understand Nonsoliciation/Noncompete terms of Employment Agreement.
      Trade Secrets - Mobile Employees
      The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
    • NONDISCLOSURE AGREEMENTS
      One-Way Disclosing
      One-Way Receiving
      Mutual NDA
      Every engagement with a 3rd party is a negotiation.
      Work with your attorney to understand the parameters for each engagement.
      If you are not protected, tell the other side what you can do in broad high level terms without disclosing the “magic.” Avoid being “pumped.”
      Sharing Information
      The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
    • Types of IP Protection
      Trademarks – Protect the brand equity investments (Company Name, Logo, Product Names).
      Copyrights – Protect creative works (authorship, graphic design, etc…)
      Patents – Protect technical innovations
      Trade Secrets – Protect economically valuable non-public information (technical/business)
      The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
    • Identifying Innovations
      What is it about your product that is different and adds value?
      Team: Design, Dev., Mktg, Sales, Apps.
      Features that enable value added differentiators should be analyzed for protection.
      The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
    • Patents vs. Trade Secrets
      Is the innovation capable of being maintained in total secrecy FOREVER!
      Facebook – NOT!
      Advanced threading algorithm executing ONLY on Company Servers and incapable of reverse engineering – maybe?
      Trade Secrets – Once it is public, it is GONE.
      The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
    • Patent Basics
      Provisional v. Nonprovisional
      Specification, Drawings, Claims
      Novel & Not Obvious
      Technical innovations
      Software – Yes
      Pure Business Methods – No
      The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
    • Patent Basics (cont.)
      • “Right to Exclude” for 20 years from filing date
      • 1 year bar dates in the U.S.
      • Publication - Conferences
      • Public Use – Samples, Prototypes
      • Sale or Offer for Sale - Quotes
      • Provisional Patents – Abandoned after 1yr.
      • Foreign Filing – Non-public/1 yr from filing
      The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
    • Patent Process Basics
      Meeting with Patent Attorney to:
      Review product offerings and identify potential innovations
      Develop “portfolio” and “business” strategy
      Deep dive into identified technologies
      Drafting and Filing of Patent Applications
      Duty of Disclosure
      Foreign Filing, Provisional/Nonprov.
      The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
    • Patent Process Basics (cont.)
      Publication/Non-publication – 18 mo.
      Examination by USPTO – 1-2 yrs.
      First Office Action/Response
      Further Examination/Responses
      Allowance/RCE/Appeal
      Continuations, Divisionals, CIPs
      Patent Grant
      Maintenance fees
      The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
    • Misc Patent Issues in High Tech
      Product Clearance and Patent Search
      Standards, Open Source, and RANDZ terms
      Contracts and Development Agreements
      Cost/Quality/Scope
      Offensive/Defensive Strategies - Litigation
      The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
    • Closing Thoughts
      Intellectual Property Rights are “Assets” that add value to your business.
      Your Lawyers “should be” trusted members of your executive team.
      Choose carefully and deliberately.
      “Help me, help you.” Jerry McGuire
      The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C. All rights reserved
    • THANK YOU!