IP Crash Course For Startups

ip crash course for startups: a practical approach ernest grumbles merchant & gould 1.27.2010

start with tacos

taco cabana…

signs…

inside the store…?

a taco patent…on a…

taco making machine…

a taco trademark

what is ip?
Creations :
technology/products
brands
writings/images/sound

forms of protection
technology
patents
trade secrets
brands
trademarks
trade dress/shapes
writings/images
copyright

9 things about patents

patents-#1 what?
exclude others from use of an invention.
reward inventors for a limited period
all countries have patent systems

patents-#2 why?
market exclusivity
strategic tool against competitors
licensing revenue streams
build value in business – “patent pending”
set up company for investment, acquisition

patents-#3 examples

patents-#4 process
identify inventions
maintain secrecy
gather information and prepare an application
file with the pto
hang on the wall

patents-#5 time to get
18 months to 5 years from filing of application.
length varies by technology
software patents – up to 5 years
Claims may never issue.

patents-#6 cost
$500 to $5000 for provisional application
$4000-$18,000 for non-provisional application
depends on technology, business goals and timing

patents-#7 duration
20 years from filing
once it dies, it’s dead
but:
continuation-in-part applications

patents-#8 enforcement/defense
search before new tech release
patent litigation ain’t cheap
$3 million in fees/costs would be a good deal for an active case
cases can last 2-5 years

patents-#9 best practices
do you know your IP?
does the company own the ip??
what tech drives revenue?
confidentiality
provisional = quick “patent pending”
periodically review R&D

9 things about trade secrets

trade secrets-#1 what?
confidential information that has value from not being generally known
has protection only as long as secret kept – like the Coke formula
protected by statute (like Uniform Trade Secrets Act) and contract

trade secrets-#2 why?
build value in business – proprietary formulas/processes
preserve market advantage
keep secret forever – can’t with patents
preserve patentability of inventions

trade secrets-#3 examples MARKET PLANS, FINANCIALS, SUPPLIER LISTS, CUSTOMER LISTS

trade secrets-#4 process
maintain secrecy of data
identify inventions
control access
consider a log

trade secrets-#5 time to get
you own as soon as you create
no formal filing process

trade secrets-#6 cost
cost of development
cost of maintaining secrecy

trade secrets-#7 duration
perpetual – if it can be maintained as such
coke formula
the rabbit has to stay in the hat

trade secrets-#8 enforcement/defense
when to sue?
complex litigation
often bundled with employee-related disputes (coke-pepsi)
injunctions…!
costs - $400k-$3 million

trade secrets-#9 best practices
confidentiality policies (“CP’s”)
use NDA’s when possible
mark “confidential” materials as such
protect sensitive materials (or facilities)

9 things about trademarks

trademarks-#1 what
exclusive use of brand for specified goods or services
rights based on use in the marketplace
U.S. federal and state level (statutes and common law)
all countries have trademark systems

trademarks-#2 why
market exclusivity for brands – unique association
promote customer loyalty (TONY THE TIGER)
prevent customer confusion
strategic tool against competitors
build value in business – ®

trademarks-#3 examples
word mark: EXXON
stylized word mark:
design mark: TONY THE TIGER
color: yellow for sticky note pads (“Post-Its”)
product shape: the Coke bottle

trademarks-#4 process
identify brands (incl. ones to be used)
evaluate market significance/strength of mark
search!
federal v. state
file application
prosecute to registration

trademarks-#5 time to get
common law – rights upon use
federal registration process - can take 18 months
state registrations – much quicker

trademarks-#6 cost
trademark search - ~$700
U.S. tm app. - ~$1000 (single class).
up to $2K in additional prosecution costs
state tm’s – much cheaper
foreign applications - generally more

trademarks-#7 duration
perpetual???
registrations indefinitely renewable
STELLA ARTOIS – claims rights back to 1366
when marks die – ASPIRIN, ZIPPER, DRY ICE, ESCALATOR (generic terms)

trademarks-#8 enforcement/defense
sue for likelihood of confusion (similar mark on similar goods)
trademark litigation ~$400K-$2M.
most disputes settled
cases can last 1-3 years.

trademarks-#9 best practices
communicate with marketing/product teams on brands
search before you sell!
prioritize revenue-driver brands

trademarks-#9 best practices
file Intent to Use (ITU) applications for quick protection
maintain uniformity of use
enforce rights

copyrights
protects writings/images/sounds
inexpensive to register
protection lasts over 100 years
register soon after public release
protected by U.S. statutes
good for company code, manuals, images

the end [email_address] www.ernestgrumbles.com 651.400.0629

IP Crash Course For Startups

by Ernest Grumbles on Mar 10, 2009

Accessibility

Categories

Tags

Upload Details

Usage Rights

Statistics

IP Crash Course For Startups — Presentation Transcript