Discussion around intellectual property, leverage over consulting projects to build vertical application software. In my use case, data mining, artificial intelligence and intelligence augmentation are part of the value add. Also, discuss software frameworks, open source software and clauses on prior inventions in hiring contracts

1. Tales from an IP Worker in
Consulting and Software
By Greg Makowski, on Wed 9/12/2018,
Invited Panel speaker for “Real World Intellectual Property Issues and Opportunities”
Continuing Legal Education seminar, entitled “IP for the Rest of Us.”
At Washington State Bar Association Conference Center in Seattle.
https://www.wsba.org/news-events/events-calendar/2018/09/12/default-calendar/intellectual-
property-(ip)-for-the-non-ip-lawyer-cle
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2. Outline
 This IP Worker is an example IP Prospect in Consulting & Software
 Motivation for IP Retention in Spectrum of Consulting  Software
 IP Challenges for Releasing a Framework
 Open Source Software & Licenses
 IP Challenges when being hired - clauses on Prior Inventions
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3. This IP Worker is an Example IP Prospect
in Consulting and Software
 Greg Makowski, Head of Data Science Solutions (team of 10)
FogHorn Systems (Industrial IoT startup, Series B)
 Worked at 7 startups, 3 exits or acquisitions
Deployed 90+ data mining models since 1992 (consulting/startup)
8 Enterprise or SaaS applications with automated mining
One provisional patent application
 www.LinkedIn.com/in/GregMakowski
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4. Motivation for IP Retention
in Spectrum of Consulting  Software
 Startup Valuation = 1 * (consulting revenue) + 10 * (software revenue)
 ”Intelligence Augmentation” is using AI to complement a job function
 Automate the “boring stuff”, help humans to be strategic
 The “IP worker” enables “knowledge workers” with IA
 Want to build software and IP
 Customer lead, product driven
 Get a Minimum Viable Product (MVP) out to test quickly in the market
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5. Motivation for IP Retention
in Spectrum of Consulting  Software
 IP Evolution over repeated consulting over similar repeated projects
(ONLY IF RETAIN SOME IP OVER PROJECTS)
1-2: investigate, eliminate dead ends, get something working
3-4: consultants build general functions to leverage over clients
5+: may develop a “framework” for internal or external consultants
7+: organically “grow a product” with GUI and back end
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6. Motivation for IP Retention
in Spectrum of Consulting  Software
 IP Evolution over repeated consulting over similar repeated projects
(ONLY IF RETAIN SOME IP OVER PROJECTS)
1-2: investigate, eliminate dead ends, get something working
3-4: consultants build general functions to leverage over clients
5+: may develop a “framework” for internal or external consultants
7+: organically “grow a product” with GUI and back end
 Alternate, speeding up the process:
1-2 concurrently: reduced consulting rate for “customer development
partners” focus on 80% overlap
Custom work for corner cases is at the full rate
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7. Motivation for IP Retention
in Spectrum of Consulting  Software
 RETAIN SOME IP OVER PROJECTS, Analogy:
 We will develop your worksheet system with your data, charts and functions.
 You keep your worksheet and anything related to your data is only for you
 We keep code for vertical independent functions, like Excel formulas
 Up front clause in Statement of Work contract with client
IP Ownership: The STARTUP has code building blocks for creating your applications on
the The STARTUP platform. As a customer you will pay for our service to assemble, test
and receive an annual license to use this code. The STARTUP will support and maintain
this code during the license period. All data collected is exclusively the property of the
customer. The STARTUP would retain IP on processes and code like automated cluster
creation and outlier alert description generation.
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8. IP Challenges for releasing a framework
 A “software framework” could be
Bought by other System Integrators (SI) for one client deployment
The SI integrates many systems together
Is mostly “source code” + documentation aimed at the SI
SI may be common way to enter other countries
 IP Challenges and attempted solutions
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9. IP Challenges for releasing a framework
 A “software framework” could be
Bought by other System Integrators (SI) for one client deployment
The SI integrates many systems together
Is mostly “source code” + documentation aimed at the SI
SI may be common way to enter other countries
 IP Challenges and attempted solutions
Can try to protect IP of source code with contract
Can “obsfucate code” to add effort for SI to rework
Can trademark main code with Federal Registration on “meaning”
Add trademark notice at top of files. Removal proves intent.
https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf
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10. Open Source Software & Licenses
 Search for “The Cathedral and the Bazaar pdf” for motivation of OSS
Cathedral – top down development by declaration
Bazaar – bottom up, self organizing
Can be easier for one of 400 part time people to find and fix a bug than a
mandated team of 6
http://www.unterstein.net/su/docs/CathBaz.pdf
 Open Source Licenses
https://en.wikipedia.org/wiki/Open-source_license
https://en.wikipedia.org/wiki/Comparison_of_free_and_open-
source_software_licenses
Apache Software Foundation https://www.apache.org/
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11. IP Challenges when Being Hired:
Clauses on Prior Inventions
 Normal:
List “prior inventions” with appendix pages as part of hiring contract
If employee uses prior inventions at the company, company can use going
forward with no constraints
Employee can still use IP at future companies
 Too aggressive, walk away:
If employee uses at company, employee can never use elsewhere in future
companies
May happen at big companies not used to prior inventions
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