Successfully reported this slideshow.
We use your LinkedIn profile and activity data to personalize ads and to show you more relevant ads. You can change your ad preferences anytime.

AZBIA & Traklight present "New Year, New Business" Open House


Published on

Traklight organized the New Year New Business event open house with CEI and AZBIA.
5 presenters shared on their legal expertise in the area of intellectual property. Patents, protection, copyrights, business formation, contracts and identification of intellectual property permeated throughout the presenter's discussions.

Russ Yelton (President and CEO of NACET) & Joann McMaster (President of AZBIA)

Mary Juetten (Founder and CEO of Traklight

Juliet Peters (Founding Partner of Becker Peters, PLLC)

Ron Kisicki (registered Patent Attorney and Partner with Woods Oviatt Gilman, LLP)

Ruth Carter (Owner and Attorney of Carter Law Firm, PLLC)

Published in: Education, Business
  • Be the first to comment

  • Be the first to like this

AZBIA & Traklight present "New Year, New Business" Open House

  1. 1. PROTECTING YOUR BUSINESS IDEAS Mary Juetten, Founder & CEO AZBIA Open House January 15, 2014 "TRAKLIGHT", "ID YOUR IP", "IP VAULT", and "IP CLOUD" are registered trademarks of The PIP Vault, LLC. © MMXIII The PIP Vault, LLC. All Rights Reserved.
  2. 2. Got Intellectual Property? Why Care… • IP theft costs US companies $250 billion annually • 100% of all companies have IP • 700K new startups annually vs. 20% protected IP after 1st year • IP is most valuable asset and not on your Balance Sheet • Exclude competition; Attract investment (incl. crowdfunding); Leverage & license • Avoid IP loss, infringement, or business failure Disclaimer: This is intended to be general information. Nothing in this presentation constitutes legal advice. Please consult with an attorney before making any intellectual property protection decisions.
  3. 3. What is IP? • • • • Patents (utility & design) Copyright © Trademark/Service mark TM SM ® Trade secrets – unsung heroes NO legal advice provided!
  4. 4. Case Studies IP Awareness Assessm ent • • • • • Inventor Website Software Restaurant Traklight! 2/ 26/ 13 11:42 AM IP category Trademarks IP Strategies & Best Practices ` Q5. Do you control and manage the proper use of your trademark by other users you have authorized? Trademarks Copyrights 1. Yes. 2. No. Design Patents 3. Not sure. Trade Secrets Utility Patents Using Technology of Others Next Licensing Technology to Others International IP Rights IP Asset Tracking Before starting the assessment, please note: Save the link for this page as a favorite/bookmark on your browser. In the “Internet Options” of your browser, deselect/uncheck history on exit. This will allow you to return and resume your assessment session in case you cannot finish it in one sitting. This will Important Notice also allow you to access your training materials and assessment results at your convenience. Please note that any information provided here does not constitute legal advice, but is intended to increase your IP awareness. When filing an application for obtaining specific IP rights, it is recommended that you obtain professional legal assistance. The IP Awareness Assessment contains links to external websites. USPTO does not maintain those external sites and is not responsible for the material found therein. As you are answering the assessment questions, choose the answer that best applies to your business or circumstances as an independent invento r or individual. Where applicable, cho ose all the responses that apply to your situation. Responses or data collected in the assessment are not stored or used by the USPTO or NIST MEP. Accessibility Federal Activities Inventory Department of Commerce Strategy Targeting Organized Privacy Policy Reform (FAIR) Act NoFEAR Act Report Piracy (STOP!) Terms of Use Notification and Federal Careers Security Employee Antidiscrimination STOP! Site Index and Retaliation (NoFEAR) Act Department of Commerce Contact Us Budget & Performance Emergencies/Security Alerts Information Quality Guidelines USPTO Webmaster Freedom of Information Act This page is owned by Inventor Resources. http:/ / inventors/ assessm ent/ assessm ent.htm l Last Modified: February 26, 2013 Page 1 of 2
  5. 5. IP Misconceptions • IP is just for Tech Startups or Tech companies & Patents are the only IP for inventors • Trade secrets are the easiest to protect because there is no registration. • You can copy anything without a copyright © • You can copyright an idea. • Domain = TM • If I pay for it, I own it. • Patents means right to make or sell
  6. 6. Start on the Right Trak Do NOT start with creating a: Campaign Pitch or Business Plan THIS APPLIES TO ALL FINANCING! Disclaimer: This is intended to be general information. Nothing in this presentation constitutes legal advice. Please consult with an attorney before making any intellectual property protection decisions.
  7. 7. Strategies: 1.ID IP 2.Protect IP ✔ WHY WHO WHAT WHEN WHERE
  8. 8. WHO: IP Ownership Challenges • Multiple Inventors • Who you are? Employee of another company • Proper Assignment of IP Rights – personal versus company • Assume that Ownership automatically extends outside the US
  9. 9. WHEN: Key Dates to Remember • Date of Idea/Invention (First to Invent  First INVENTOR to file) • Date of Use • Date of Filing • Date of Conversion • Renewals
  10. 10. WHAT: Business Plan/Funding Presentation • • • • • • Idea URL Name Know how Employees Contractors
  11. 11. Strategies to Protect IP • Do it Yourself: – – • Hire a Professional: – Attorney, Consultant, Legal Zoom, Rocket Lawyer • Secrets: – Notary, IP Vault, Copyright software
  12. 12. Ignorance is NOT a Defense Be Careful: Video Copy Business Plans
  13. 13. Questions? Mary Juetten @traklight
  14. 14. Equity Issues LLC VS. CORP VESTING
  15. 15. Operating Agreement Must Haves Buy-Sell Language  Provisions for Death or Divorce  Different Classes of Units  “Profits Interest” Language  Valuation Formula  Deadlock Provision 
  16. 16. Secure Your IP Technical Co-Founder Outsourcing Your Development In-House Development
  17. 17. Working with a Technical Co-Founder? Technology Assignment Agreement or Exclusive License • Broad as possible • Terms should be worldwide, right, title or interest to company and forever (perpetual) • Confidentiality • Ability to get injunctive relief • Strong Reps and Warranties
  18. 18. Outsourcing Your Development? Development, Consulting or Work Made for Hire Agreements Work Made for Hire but Cover Your Bases Master Agreement with SOW Attached Reps and Warranties, Indemnity, Insurance Non-Disclosure Agreements
  19. 19. In-House Development? To Non-Compete or not to Non-Compete Proprietary Rights Agreements
  20. 20. Other Assistance  Technology Advisors  Advisory Board Members
  21. 21. Safeguard Your IP  Actively protect it  Trademarks  Patents  Trade Secret Protection  IP Identification and Storage Product Traklight at
  23. 23. Resources  Orrick's Start-up Forms  Gunderson Dettmer LLP
  24. 24. The Provisional Application Ronald J. Kisicki, Esq. 275 N. GateWay Drive Phoenix, AZ 85034 602-633-1793 © 2014 Woods Oviatt Gilman LLP
  25. 25. First Inventor to File A File B File
  26. 26. First Inventor to File A P.D. File B File
  27. 27. Option 1 – Public Disclosure Advantages: • • Easy Inexpensive Disadvantages: • • • • Discloses your hand to the public Foreign filing rights lost Must file an application in the U.S. within one year Places you on the defense to prove disclosure if third party files first
  28. 28. Option 2 – File Provisional Application Advantages: •Better (?) documentation of invention •Invention is held in secrecy •May preserve foreign filing rights •Provides foundation for non-provisional application •“Patent Pending” status •May extend the patent term Disadvantages: •More costly •Can expose eventual patent to invalidity issues
  29. 29. Content Must Include: •Specification that conforms to the disclosure requirements of 35 U.S.C. §112 • • Enablement Written description disclosure requirement •Drawings – if needed to understand the invention Need Not Include: •Claims • But, without claims, later patent relying on the provisional may be invalidated if shown that inventor did not have a full grasp of his/her invention (i.e., fails written description disclosure req.)
  30. 30. Other Points • In order to rely on the filing date of the provisional, the non-provisional must: • • • • be filed within one year of the provisional; properly state that it claims priority from the provisional; have at least one common inventor with the provisional; and the claims of the non-provisional must be fully supported by the specification of the provisional.
  31. 31. Questions?
  32. 32. Copyrights & Trademarks Ruth Carter, Esq. @rbcarter Carter Law Firm, PLLC
  33. 33. DISCLAIMER (cc) swimparallel
  34. 34. Copyrights (cc) pdinnen
  35. 35. Minimum Requirements Original work of authorship fixed in a tangible medium (cc) wwarby
  36. 36. Copyright in Business • Website content – verbiage, photos, videos • Software code • Marketing materials • Product descriptions
  37. 37. Copyright Rights • • • • • (cc) Crystl Copy Distribute Display Perform Create Derivative Works
  38. 38. Trademarks (cc) avlxyz, iPyo, marcopako
  39. 39. Purpose of Trademarks Protect Consumers Inform them about the source & quality of goods & services (cc) lululemon athletica
  40. 40. What’s the Difference? TM
  41. 41. Cautionary Tale (cc) MrSchuReads (cc) comedy_nose
  42. 42. More Information Traklight Carter Law Firm, PLLC