IP Protection Strategies on a Budget

IDEA © 2016 Kimberly Sahu
Intellectual Property Protection Strategies
What you need
When you need
What you can do if you can’t afford it…
Kimberly Sahu
VentureLawyer.io
KimberlyASahu@gmail.com
Presented at St. Louis
Product Camp 2016

Legal Disclaimer (because I have to): I am an attorney,
but I am not your attorney. This presentation is for
educational and informative purposes only and does
not create an attorney client relationship.
Let`s start!

What types of Intellectual Property does your business have?
IDEAS
Patents
Trademarks
Trade
Secrets
Copyrights
Why you should bother?
Because what you don’t know CAN hurt you.
© 2016 Kimberly Sahu

1. IDEA
01
How do you
protect
your idea?
03
02
IDEA
What do you
do with an
Idea?
Contract Law
Keep it Secret
Public Disclosure

Taco Bell Chihuahua
1997 - Joseph Shields and Thomas Rinks’ Psycho Chihuahua
TBWA Chiat/Day
2003 - $42 Million judgement against Taco Bell- based on Breach of Contract
2009 - Taco Bell sues TBWA and looses

Expensive
2. PATENTS
 Provisional filing fee: $260.00/$130.00/$65.00
 Basic utility filing fee: $280.00/$70.00/$70.00
 Surcharge, extra claims, size fees, time extension fees,
maintenance fees
 Utility search fees: $600.00/$300/$150
 Utility examination fees: $720/$360/$180
 Utility issues fee: $960/$480/$240
 Attorneys’ fees: depends on the firm- thousands
A lot of
work
Can take months to file, years to issue

Why Bother?
In 2014
2. PATENTS
7,481
4,936
4,048
2,829
3,214
2,566
2,586

What do they do with all these patents?
-Squash competition
2. PATENTS
How do they do it? Infringement Lawsuits
-Microsoft v. Apple
-Microsoft v. You
-Microsoft v. US Government

First thing you do? SEARCH
2. PATENTS
- Hire an Attorney
- Hire an Agency
- Do it yourself (then give it to an attorney)

Why you should fear someone else’s patents
2. PATENTS
-Because they can stop you from making/selling/importing/using
their invention
- Cease and desist letters
- Lawsuit
- Court injunctions
- Damages
- Attorney’s Fees

Caution! Strict Deadlines for filing Patent Applications
2. PATENTS
- 1 year from first disclosure for US applications
- File BEFORE disclosure for foreign applications

But I’m a startup, I can’t afford all this!
2. PATENTS
How much did you spend on development, manufacturing, sales?
Do your own search- and give results to attorney
Write as much as possible for your application- and give to
an attorney
Shop around for an Attorney/Agent

2. PATENTS
Should you patent?
- How valuable is your invention?
- How reverse engineer-able is it?
- Are you ready to enforce it?
- How quickly is the market evolving?
Other Options
- Defensive Publishing
- Trade Secret

3. TRADE SECRETS
What is a trade secret?
-Anything you don’t want your competitors to know
-Anything that gives you a competitive advantage
- Secret recipes- Coca-Cola
- Customer lists
- Customer personal information
- Price lists
- Supplier quotes
-etc…

3. TRADE SECRETS
Why would you choose trade secret?
- If you don’t want to disclose the information
- If its hard to reverse engineer
- If the tech becomes obsolete quickly

3. TRADE SECRETS
How to protect a Trade Secret?
-Robust protection policy
-Non-disclosure agreements
-Keep information need to know
-Limit access- keep locked up
-Exit interviews with reminders
- etc...

3. TRADE SECRETS
Legal recourse
- Breach of Contract, Theft, Unjust Enrichment
- But must have worked to actively maintain secret
- But once secret is out, its out

4. TRADEMARKS
- Identify a Product/Service’s origin
- Aka Brand
- For the benefit of the consumer
- Context dependent

4. TRADEMARKS
- Before doing anything else
- Don’t want to accidently/purposefully infringe
- Coming to America- McDowell’s
- IDrone
First : Search

4. TRADEMARKS
- Cease and Desist Letter
- Lawsuits
- Injunctions
- Damages
- Legal fees
- Starting all over
Infringement Consequences

4. TRADEMARKS
-Stop freeloaders
-Stop copiers
-Protect reputation
-Prevent unnecessary litigation
Why should you care/ spend the money?

4. TRADEMARKS
- Available
- Distinctive
Requirements

4. TRADEMARKS
- Cant be confusingly similar to a name already in use
- Depends on
- type of goods
- brands being used
- where they are being used in commerce
- business expansion plans
- selling context
- advertising form
- etc…
Availability

4. TRADEMARKS
 Generic- no
 apples, e-store
 Descriptive- maybe eventually
 Awesome Computers, American Airlines
 Arbitrary- yeah most likely
 Apple, Amazon
 Fanciful- definitely
 Microsoft, Exxon
Distinctiveness

4. TRADEMARKS
3 Levels of Potential Protection
Common Law rights
-Automatically attach
upon a mark’s use in
commerce
-Limited
geographically
-Free
State Registration
-Protection limited to
that state
-Cheaper/ faster than
Federal Registration
Federal Registration
-More expensive- $225-
$275 filing fee
-Attorneys fees- starts at
about $500
-Takes about 8 months – 2
years
-Get to use R in a circle
-Nationwide protection
-Valuable legal
presumptions
-Register with US customs

4. TRADEMARKS
- Tie up the name
- Put ™ all over it
- Advertise the crap out of it
So what can you do if you can’t get federal protection?

5. COPYRIGHT
 Protects the expression of an idea, not the idea itself
 Art, pictures, designs, software code, music, recordings,
 choreographies, plays, books, websites, etc…
 Right to prevent other from reproducing, adapting,
distributing, performing, and displaying
What it is? What does it do?

5. COPYRIGHT
-Common Law
- Attaches automatically at the moment of creation
- Actual damages
- Burden of proof – ownership and copying
- Put © , your name, and the year on it
- Federal Registration
- Taking your rights to the next level
- As long as its before suit
- Statutory damages and attorney’s fees
- Legal presumptions
What rights do you get and when do you get it?

5. COPYRIGHT
-Don’t cut and paste- Ever!
-Don’t tell someone to cut and paste
-Beware- by admitting to changing something enough to avoid
infringement you are actually admitting to infringement!
-Work for Hire- must be in writing
-Fair Use Exceptions- based in the 1st Amendment: Freedom of
Speech
Infringement

5. COPYRIGHT
-Actual damages- lost profits
-Statutory/ Automatic damages- per incident- music downloads
-Injunctions
-Seize and destroy orders
-Litigation expenses
-Attorney’s fees and court costs
Risking it all

www.yourwebsite.com
ContactInfo
Kimberly Sahu
www.VentureLawyer.io
KimberlyASahu@gmail.com
If I spent too long talking feel free
to see me after the presentation or
send me an email.
Questions?

IP Protection Strategies on a Budget

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