This workshop, led by intellectual property attorney and founder of Smartup, Yuri Eliezer, will help you understand what options are available to secure your work and how you can cover all your bases at a reasonable cost. Attendees will leave with an understanding of the difference between patents, trademarks, and copyrights, how to protect their software, how to preserve their rights, and who owns their contributions.

1. INTELLECTUAL
PROPERTY 101
Sponsored by SmartUp®
Presented By Yuri L. Eliezer, Esq.
Intellectual Property Attorney

2. About Me
• Georgia Tech Electrical Engineer
• Georgia State Lawyer
• Registered Patent Attorney
• Entrepreneur:
• In Practice since 2005
• Co-Founded SmartUp®
• Partner at FOUNDERS LEGAL™ (Bekiares Eliezer LLP)

3. How This Presentation May Help You
• You Have Rights! Use them or lose them!
• In today’s economy, intangible assets constitute nearly 80% of corporate value.
• Investors look for Intellectual Property
• Competitors look for Intellectual Property
• Your Goal:
• Identify how your assets can be secured
• Leverage Intellectual Property Law to secure those assets
• Think BIG!
• May not seem important to you today, but you need to take the right steps today!

4. Overview of Two-Day Workshop
• IP 101:
• Patents – Trademarks – Copyrights - Trade Secrets
• Software – What Protection is available?
• Steps to take in order to Secure Your IP
• Timing – Deadlines - Formalities
• Sharing your IP Rights
• Partners - Joint-Ownership – Licensing
• NDAs

5. FEDERAL LAW
(MORE PROTECTION THAN STATE LAW)
1. PATENT LAW
• Protection for your Innovation
2. TRADEMARK LAW
• Protection for your Brand and Reputation
3. COPYRIGHT LAW
• Protection of your Artistic Works and Authorship
4. TRADE SECRET LAW
• Protection for your Secrets

6. The Fruits of Your Genius
Breaking it down into Categories
Ideas and
Inventions
(Patents)
Artistic Works
(Copyrights)
Brand and
Reputation
(Trademarks)
Confidential
Information
(Trade Secrets)

7. What Type of IP Protection?

8. Trademark Basics
Add: Class Distinction

9. What Is A Trademark?
• A source identifier that indicates that this product was made by you.
• Anything a businesses uses to distinguish its goods from those of another:
• Name / Logo / Slogan
• Packaging
• Design
• Sound
• Scent
• Consumers use trade symbols to identify goods and services and the
attributes that go along with them.

10. Why do we have Trademark Law?
1. Quality Control
2. Protection from Consumer Confusion
3. Protection from Unfair Competition

11. Trademark Basics
• The more distinctive a mark, the greater protection provided under the law.
• Fandango
• Marks that must acquire secondary meaning:
• Descriptive marks
• “PIZZA RESTAURANT”
• Geographic marks
• “NEW YORK PIZZA”
• Generic marks – Not protectable under trademark law – they describe the basic nature of the good or
service, e.g. “Apple Co.” for a company selling apples.

12. Trademark Basics
Trademarks last the lifetime of the product/service
...But Trademarks can be lost
• If not enforced
• Government Gives you a Badge, Use it or Lose it!
• If they become generic by improper use
• A [your trademark here] brand [product or service]
• Famous Generic Trademarks – Allen wrench, aspirin, bikini, formica, frisbie, cola, granola,
hoagie, dry ice, windsurfer, windbreaker, rollerblades (almost), white-out, Zamboni, zipper.
Find more Generics at www.answers.com/topic/genericized-trademark.

13. Typical Trademark Mistakes
• Picking a “bad” mark and sticking with it
• Searches should always be done prior to selecting a mark.
• Your trademark need not, and probably should not, be your business name.
• Domain name issues!
• Waiting to File Federal Registration
• Loss of rights if someone files before you
• Waiting to Enforce your TM rights
• Fast enforcement saves money (infringer has less money invested so more likely to adopt different
mark) and prevents loss of rights from non-enforcement
• Can put Rights on Hold 1(B) Filing

14. What Type of IP Protection?

15. Patent Basics

16. Types of Patents
Utility Patents
• Process – “A method of making
plastic comprising...”
• Composition of Matter – “A
plastic having the formula...”
• Machine – “A display device
comprising a screen and
knobs,...”
• Manufacture – “A tire
comprising a steel belt encased
in...”
Design Patents
• Covers ornamental features on
an article of manufacture
• Substantial overlap with
copyright (sculpture), trademark
(e.g., logos in soles of shoes)
and trade dress (e.g., Coca-Cola
fluted bottle)
• 14 year term
Plant Patents
• Genetically Modified Healthy
Vegetables

17. Requirements for Patentability
To be patentable, an invention must be:
1) Useful (35 U.S.C. §101)
2) New (35 U.S.C. §102)
3) Non-Obvious (35 U.S.C. §103)
Must be the First to File!

18. Utility Patents –
What is Patentable?
• Any new and useful:
• process,
• machine,
• manufacture, or
• composition of matter, or
• any new and useful improvement thereof.
• 20 Year Term!
• Gives you a long time to enforce!
• Put Competitors on Notice, Enforce when you have the money!

19. Design Patents –
What is Patentable?
• Covers ornamental features on an article of
manufacture
• Substantial overlap with copyright (sculpture),
trademark (e.g., logos in soles of shoes) and trade dress
(e.g., Coca-Cola fluted bottle)
• 14 year term

20. What is Not Patentable?
1. Abstract Ideas/Mathematical Algorithms – in and of themselves, not a
“thing”
2. Natural Occurring Phenomena
3. Laws of Nature
4. You must know how to MAKE and USE your invention, even if it’s only a
conceptual understanding.

21. A Patent is a Right to Exclude Others!

22. Typical Patent Mistakes
• Public Disclosure
• 12 months in US
• No grace period in many other Countries
• Waiting to Get Patent Protection
• Must be the First to File!
• Up-Hill Battle if you are beat to the patent-filing!

23. What Type of IP Protection?

24. What Type of IP Protection?

25. What Type of IP Protection?

26. Copyrights Basics
Emphasize non-functional

27. What Qualifies for Copyright Protection?
• Literature - Musical Compositions
• Sound Recordings
• What’s the difference between Recordings and Musical Composition?
• Pictures / Paintings / Photographs / Sculptures
• But not the Subject Matter therein, only the artistic rendition
• Motion Pictures – Choreography - Architecture
• Weird Ones:
• Vessel Hulls
• Integrated Circuitry
• Software
• Literary Work?
• Functional? -> Patents!

28. What does Copyright Law Protect Against?
• A Copyright is a property right in an original work of authorship that is fixed
in a tangible medium.
• Protects you from unauthorized:
Reproduction Adaptation Distribution Performance Display

29. COPYRIGHTS
A Copyright is a property right in an original work of authorship that is fixed in a
tangible medium.
• Duration:
• Life of the author plus 70/95/120 years (a rat’s nest of exceptions)
• Protect Non-Functional Articles
• In general, Internationally Recognized
• Registration can be Retroactive

30. Copyright Considerations
• Ideas and Concepts are not Copyrightable
• Fill-in-the-Blank Forms Not Copyrightable
• Characters, Themes, Plots do qualify
• Derivative Works require Licensing!
• Transformative works do not require Licensing.
• “Work-For-Hire” -> Rights must still be transferred.
• Joint Authorship leads to disputes.
• Transfer rights to a single entity.

31. What Type of IP Protection?

32. Trade Secret Basics

33. What is a Trade Secret?
• Information, including a formula, pattern, compilation, program, device,
method, technique or process that: (1) derives independent economic value,
actual or potential, from not being generally known to, and not being easily
ascertainable by proper means, by other persons who can obtain economic
value from its disclosure or use, and (2) is the subject of efforts that are
reasonable under circumstances to maintain its secrecy.

34. Trade Secret Examples
• A proprietary blend of chemicals, secret ingredient (e.g. formula for Coca-
Cola).
• A manufacturing process or “know-how.”
• A customer list.
• A supplier list.
• Inside business and financial information - Marketing plan, customer data,
budgets, profit margins, forecasts, internal software, etc.

35. Trade Secret Basics
• Must be treated as a secret.
• Must be generally unknown to competitors.
• If stolen, you can sue for damages
• Difficult cases to win without prior planning
• A lawsuit can’t put the genie back into the bottle

36. LET’S TEST YOUR SKILLS
Person With Most Correct Answer wins an Arduino

37. What Type of IP Protection?

38. What Type of IP Protection?

39. What Type of IP Protection?

40. What Type of IP Protection?

41. What Type of IP Protection?

42. What Type of IP Protection?

43. What Type of IP Protection?

44. What Type of IP Protection?

45. What Type of IP Protection?

46. What Type of IP Protection?

47. What Type of IP Protection?

48. What Type of IP Protection?

49. What Type of IP Protection?

50. What Type of IP Protection?

51. What Type of IP Protection?

52. What type of IP Protection?

53. What type of IP Protection?

54. What type of IP Protection?
Traffic Monitoring

55. What type of IP Protection?

56. What type of IP Protection?
Automated Vehicle

57. What type of IP Protection?

58. What type of IP Protection?

59. What type of IP Protection?
(TELEPORTATION MACHINE)

60. What type of IP Protection?

61. What type of IP Protection?
Heat-Seeking Missile

62. What type of IP Protection?

63. What Do All of These Have in Common?
• ASPRIN
• ESCALATOR
• DRY ICE
• HEROIN
• VIDEOTAPE
• TRAMPOLINE

64. The Leahy-Smith America Invents Act
• Before – First Inventor to Invent gets Patent
• Now – First Inventor to File gets Patent
• Pros:
• Places laws in conformity with International Standard
• Cons:
• No More “Poor Man’s Patent”
• Race to the Patent Office!
• Benefits larger Corporations
• Two Remedies
• Importance of Provisional Patents
• Micro-entity Status

65. Provisional Patent
• Saves Your Spot in Line for a Period of 1 Year
• Lets you claim “Patent-Pending”
• Must be followed with a non-provisional patent application
within 1 year

66. Joint Inventorship / Joint Authorship
• Each Inventor/Author owns 100% of the rights!
• Prone to disputes!
• Solution:
• Form an entity with your partners
• Assign the IP rights to the entity
• Rights governed by the entity, not individuals
• Partnership Agreement should account for IP rights upon dissolution

67. Common Misconceptions of IP Law
• You’re Automatically Protected
• Securing your IP requires affirmative action and is time sensitive.
• You Exclusively Own the IP Rights to Employee and Sub-Contractor
Projects
• IP rights must be transferred, in writing, to the Company.
• IP = Easy Money
• Properly managing your IP Portfolio is essential.
• Cyber Squatters

68. My Contact Info
Yuri Eliezer, Esq.
Yuri@SmartupLegal.com
404.537.3669
@Smartup_
ATLANTA TECH VILLAGE
Suite 555
3423 Piedmont Road, NE
Atlanta, GA 30305
To schedule a consultation with me
please visit SmartupLegal.com and click
consult!