Leverage Your IP Assets

Leverage Your Assets
Melissa Jaffe Mary Juetten
Presented by

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 > 90% 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.

What is IP?
• Patents (utility & design)
• Copyright ©
• Trademark/Service mark TM SM ®
• Trade secrets – unsung heroes
NO legal advice provided!

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.

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

• Idea
• URL
• Name
• Know how
• Employees
• Contractors
Startup Info

Strategies to Protect IP
• Do it Yourself:
– USPTO.gov
– Copyright.gov
• Hire a Professional:
– Attorney, Consultant, Legal
Zoom, Rocket Lawyer
• Secrets:
– Notary, IP Vault, Copyright software

Ignorance is NOT a Defense
Be Careful:
Video
Copy
Images
Music

READ READ READ
Read License & Permission to Use

Leveraging IP
The lifecycle of contracts regarding
Intellectual Property (IP) between
businesses.
Business + IP
© 2014 Law Offices of Melissa B. Jaffe, PC
Licensing:

Leveraging IP
BUSINESS:
“Someone
Doing Something
For Someone Else
In Exchange for
Something”
Facebook: Tao of Business Law

Leveraging IP
ARE YOU IN BUSINESS?
- Commitment
- Finances
- Goals/ Exit Strategy

Leveraging IP
Business Mistake #1: Failure to incorporate
Major benefit = Limitation on liability

Leveraging IP
Business Mistake #2:
Improper entity
- How many people are joining
together?
- Are appropriate documents drafted
& filed (i.e. Buy-Sell Agreement;
Operating Agreement, etc.)

Leveraging IP
Improper entity & failure to register
with state and local authorities
- Default = Partnership
- LLC = typically the most flexible
- (C) corporation often most restrictive

Leveraging IP
**S-L-O-W D-O-W-N**
- Brainstorm potential markets and
uses
- Be honest with your emotional and
energetic commitments
- Stay flexible
- Create an endeavor that will work for
YOU

Leveraging IP
Licensing Mistake #1:
NO BOILERPLATE LICENSE!
- You will not save money or time by
using another company’s license.

Leveraging IP
Failure to accurately determine value
- Scope of media;
- Scope of geography;
- Value to bottom-line of potential
licensee;
- Scope of time

Leveraging IP
No game plan/ strategy drafted into
license agreements
Solution:
- Use “Phases” or Milestones to gauge
success and
- Allow for easy termination
- Tie payments to desired outcomes as
much as possible

Leveraging IP
Licensing Agreements:
PAYMENT OPTIONS:
- Lump-Sum upfront payment;
- Front loaded payment;
- Royalty;
- Performance-based;
- Cascading/ Waterfall provision;
- Etc.

Leveraging IP
PAYMENTS:
- If royalty based, include Accounting
provision;
- If International, be certain to state
conversion or type of currency (ie US
dollars)
- Provide for bond if necessary after
due diligence

Leveraging IP
Exclusive v Non-Exclusive:
- Exclusive is more “valuable”;
- If permitted to sub-license, be certain
to include specific indemnification
provision

Licensing
BUSINESS:
“Someone
Doing Something
For Someone Else
In Exchange for
Something”

Licensing
Example 1:
Idea: water bottle nipple attachment for
babies

Licensing
Market:
- Young parents
- Caretakers
- Grandparents
- People shopping for moms (“gift
market”)
Etc.
- Other babies? Gag gifts?

Licensing
Potential Licensees:
- Gerber
- Green Sprouts
- Evenflo
- Gag gift developers
- Others…

Licensing
Possible License Strategy:
- Several licenses in different
countries;
- Performance-based (i.e. if achieve
milestone of $100k in revenue by
end of year 1, then automatic license
for another year. If under $100k,
termination with 90 days notice by
Licensor.

Leveraging IP
Customized Packages:
Example 1
- EIN
- TM Review
- 2 hr. consult
- 1 Agreement draft
- Redlines
Example 2
- Operating Agreements, etc.
- Business Plan Review
- Strategic Plan
- Additional Contract
- Redlines
CONTACT: 503.780.6565
WWW.MBJAFFELAW.COM

Leveraging IP
THANK YOU!
Facebook: Law Offices of Melissa B. Jaffe, PC
Phone:503.780.6565
Email: Melissa@mbjaffelaw.com
@MelissaBJaffe

Questions?
mejuetten@traklight.com
@traklight
IDENTIFY. PROTECT. SUCCEED.
www.traklight.com
Mary Juetten

Leverage Your IP Assets

Leverage Your IP Assets

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