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MY DIRTY
LITTLE
START-UP
SECRET
INTELLECTUAL PROPERTY
FOR LEGAL-O-PHOBEShttp://www.flickr.com/photos/wetfoto/
PART 1…..…………….The Roots of Intellectual Property
PART 2….……….……………Intellectual Property Law 101
PART 3.......Making Money from Intellectual Property
PART 4……..………………….Beyond Intellectual Property
PART 5………..………………………………………..IP Resources
PART 1
The Roots of Intellectual Property
Intellectual Property (IP) is a tactical
management tool
and nothing more
This is key
because the most common mistake
entrepreneurs make is to be awed,
emotional, or self-righteous about IP,
when they should be Machiavellian
Intellectual Property is not one of your
fundamental, natural rights
As it so happens, it is a public policy
that was crafted in 17th century Europe
For kings, merchants, and clerics to
divvy up the benefits of (and control)
the newly invented printing press
Before that
For tens of thousands of years of
human history
Patents
Copyrights
Trade Marks
did not exist (*)
(*) OK, super IP geeks, give me a break on this one. I’s more exciting if I state it this way, and, despite Ancient China and Senor
Brunelleschi and all, it is true in the spirit of the argument
Today, IP policy has evolved from its
mercantile roots into a mechanism to
accelerate innovation (patents and
copyrights) and quality (trademarks)
Here’s the basic Econ 101 party line
If an inventor cannot reap the financial
rewards from inventing, because
someone else steals the ideas, the
inventor will not spend the blood,
sweat, and tears required to invent in
the first place, and the whole growth
machine grinds to a halt
(patents & copyrights)
If a pirate can pass themselves off as a
quality brand, while producing cheaply,
then there will be no incentive for the
quality brand to invest in a quality
product in the first place
(trademark)
So, to fend off future stagnation,
governments strike a societal balance
between the evils of monopoly and the
benefits of innovation & quality
At it’s core, modern IP is a legal
framework that grants inventors a
limited window of monopoly during
which they can enjoy economic benefit
Or in the words of the big dogs…
“The Congress shall have the power
to promote the progress of science
and useful arts, by securing for
limited times to authors and
inventors the exclusive right to their
respective writings and discoveries”
-Article I, Section 8 US Constitution
So, simply put
Patents protect inventions
Copyrights protect (artistic) expression
of ideas
Trademarks protect quality brands /
market reputation
But…
To reiterate, ideas and inventions are
not fundamental rights
They are temporary grants, given for a
specific societal benefit
incentivization
The ideas are not “yours”
and you shouldn’t get attached to them
and…
if there are more effective ways to
achieve the societal aims of
incentivizing inventors, then we all
shouldn’t get so hung up on IP
But, one last word before we stop with
all this philosophy crap
There are also serious, potentially
unresolvable problems with IP in
today’s world
Think of these as unwanted drug side-
effects
1. Humanity was plenty inventive before 1600AD. The very
assumption that inventors won’t invent without cash may
be wrong from inception
2. The accelerated speed of invention prompted by the IP
system may be dangerous for society in a larger sense
3. It may not be fair that ideas built on thousands of years
of public domain are individually owned
4. IP enforcement is getting so hard that IP may be an
unenforceable right (e.g.: digital piracy, different legal
regimes from country to country, etc)
5. Given creativity & technology complexity and options, IP
is increasingly easy to innovate around
6. What about squeegie topics like patenting your genes
7. IP is easily abused by the powerful (e.g.: bio piracy, First
World wants versus Third World needs, etc…)
But let’s leave it at that for now
If you’re keen, you can join the rich
discussions online about why IP is evil
on your own
For now, let’s make sure that we
understand the IP regime, so that we
can legally manipulate it to our
maximum financial advantage as
entrepreneurs
as entrepreneurs are meant to do with
all public policy
mwahahahahahahahaha
PART 2
Intellectual Property Law 101
But wait, isn't IP law something to
leave to the lawyers?
NOOOOOOOOOO!
Did you know
• By 1999, 75% of Fortune 100 total market cap
was represented in intangible assets
• Massive firm investments are required for IP
creation and protection
• We are living in a globalized knowledge
economy
• IP rights are key strategic and tactical levers in
Competitive Strategy that can make or break
firms
IP is NOT something for your lawyers
It is something for you
How you manage IP is a critical part of
corporate strategy and one of every manager's
responsibilities
Lawyers can help you proof read your legal
documents
and, if your lawyers are truly bad ass…
they can even ask you tough, clarifying
questions, or give you ideas from what they've
learned in other cases
but the terms of the deals are for you, the
business, to define
based on your strategic objectives
OK, so what do you need to know about IP in
order to do your job?
At it's core, IP strategy
(which is really just corporate strategy)
defines how you manage 4 assets
1. Patents
2. Copyrights
3. Trademarks
4. Trade Secrets
Each of these assets wraps a specific
form of intangible value (like ideas or
brand image) into a legal form that can
be manipulated as any traditional,
physical form of property
In other words, IP turns the fluffy,
intangible value into a tangible economic
asset, that can be bought, sold,
transferred, administrated, & adjudicated
in a market place
Each of these 4 types of IP asset can be
understood in terms of 6 characteristics
1. What can be protected
2. How long do you get the protection for
3. What constitutes infringement
4. How do you enforce your rights
5. How do you punish infringers
6. What is the process required to obtain
the asset, how long does it take, & how
much does it cost
Here's an example of what I mean
PATENT COPYRIGHT TRADEMARK TRADE SECRET
Scope Product of process
Inventions that do
something new
FYI: Utility, Design,
and Plant Patents
cover a smaller
scope
Expression of an
original idea (not the
idea itself), whether in
words or an "artistic"
endeavor, 2-D or 3-D,
static or performance
Word, phrase, symbol or
design, or a combination
thereof, that identifies
and distinguishes the
source of the goods of
one party from those of
others.
• not generally known to the
public
• confers some sort of economic
benefit on its holder (benefit
must derive specifically from its
not being publically known, not
just from the value of the info)
• is the subject of reasonable
efforts to maintain its secrecy
Duration
(before asset
moves to public
domain)
20 years from filing
FYI: Various rules
about the period
between filing &
securing a patent
70 years after the
death of the author
(work-for-hire up to
120 years)
10 years In the words of Bono, "a secret is
something you tell one other
person"
Infringement Others may not
make, use, sell, or
import your
invention
Others may not
reproduce, prepare
derivatives, distribute,
perform or display in
public (fair use claim
possible)
Others may not use your
trade mark (pretend to be
you in the course of trade
with customers to your
detriment)
Others may not use what they have
learned unless as above for scope
Enforcement Patent Infringement
Action
Civil suit or criminal
misdemeanour /
felony
Lawsuit You may sue for Misappropriation
Remedies Varies Usually injunction to
stop infringing +
damages + forfeit of
remaining duplicates
Usually injunction to stop
infringing + damages
Varies
Process / Cost
(see the last slide of
this deck)
Quite complex and
potentially very
expensive
Easy and cheap You don't even need to
register, though you can.
None
Of course, this is just an example
despite international agreements like PCT,
TRIPs, the Berne Convention, etc., all 6
characteristics will vary from country to
country
lawyers can help you answer questions
about which laws apply where
but for the lawyer to do much more, you’ll
need to answer some fundamental
questions
1. Where (in which countries) should I
register, given my short, mid and long-
term business/marketing plan
2. What is the right mix of protections to
invest in, given expected market
responses
3. How much should I (can I afford to)
spend on IP registration, protection, &
management given forecasted ROI and
risk
That’s the stuff the lawyer will have no idea
about
but it’s the stuff that really matters
PART 3
Making Money from Intellectual
Property
with all that said, at the end of the day,
the good entrepreneur has only one
question
how do I make money from all this?
there are 6 ways (that I can think of) to
squeeze value from IP
1. License Agreements
2. Valuation
3. Competitive Tactics
4. Branding
5. Internal Incentives
6. Litigation
The most practical use for
IP is to legally/formally
establish an underlying
asset that can be sold,
borrowed, traded, or used
as the basis for some
economic transaction
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
And the legal mechanism
that underlies the economic
transaction involving IP is
called a
License Agreement
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
A License Agreement is a
contract between an IP
owner and an IP user
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
It defines the terms of the
transaction
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
• What can the buyer do (or
explicitly not do) with the asset
• How much will the buyer pay for
the asset and what are the terms
of that payment
• What other services come with
the transaction (like support)
• How long will the buyer enjoy
these rights before they need to
re-sign?
• In which territories will the rights
apply?
• Etc…
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
For example,
"for the agreed upon
consideration (let's say 59.99),
the user may download the
software onto a single PC and
use it for 3 years. She may also
enjoy up to 3 support requests
during the license term"
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
you know.
when you get that
Microsoft pop-up dialog
with that long stream of
blah-blah-blah text that you
ignore and then quickly
click "I agree"
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
That's a License Agreement
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
And you've just signed away
your first-born child by
clicking, "I accept"
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Finally, note that the terms
of a License Agreement can
be as varied as the
imaginations of the buyer
and seller
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Don't feel restricted to any
template
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
The License terms are just
your business model
masquerading as a legal
document
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
That's why License
Innovation can be as
profound as Product
Innovation
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Consider the earthquakes
caused in the Software
Industry by the innovation
of the GNU General Public
License – which was not
technology
(http://www.gnu.org/licenses/gpl.html)
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
IP can also form the
underlying asset used to
increase a company's
valuation
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Sometimes we refer to a
company's, "goodwill value"
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
This "goodwill value" is the
hypothetical value of a
company's intangible assets
including reputation, brand,
Intellectual Property, etc
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
when valuing a company (in
the case of acquisition for
example), the goodwill
value is added to the hard
value of physical assets like
buildings or inventories and
the hard-ish value of
financial forecasts
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
The goodwill value can be
significant
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
We already mentioned the
Fortune 500 stat earlier!
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Since IP is one of a
company's intangible assets,
formalizing that IP through
patents, copyrights, or trade
marks can be helpful when
arguing for goodwill value
when your company is being
valued
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
But….
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Just having a patent does not
immediately raise your
valuation, as start-up
folklore might suggest
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
At the end of the day, you
still need to explain what
you are going to do with
your IP….how you will
convert the intangible value
into cold, hard cash
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
There are also lots of fun,
wonderfully-evil,
Machievellian / Sun Tzu
types of tactical games that
companies play with IP for
profit
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Though, to be frank, these
are more interesting for big
companies rather than start-
ups
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
The most basic IP tactic is
the Pre-emptive strike
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Which is basically…
Patent before someone else
does.
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
The thing is….
Even if you legitimately have the IP
first, you don't want to get bogged
down in a bunch of annoying
lawsuits because some joker files
and then starts causing trouble
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Once you have the patent, you
proactively fend off potential
annoyance – like a bug spray
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
By proactively patenting, you'll also
go through the Patent Search
process
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
This helps ensure that there
are no Submarine Patents or
other bugs lurking out there
that could come back to bite
you when you are rolling in
the dough
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
And these bugs can be VERY
annoying
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Consider Patent Trolls (non-
practicing entity)
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
A Patent Troll is an
aggressive, opportunist
person /company that claims
patents, often with no
intention to manufacture or
market the product
AKA an A$$hole
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
The Patent Troll takes advantage of
the fact that the cost of defending
against a patent infringement suit,
as of 2004, is typically $1 million or
more before trial, and $2.5 million
for a complete defence, even if
successful
https://en.wikipedia.org/wiki/Patent_troll
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
And worse yet, you never
know what might happen
when a jury is involved!
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Trolls know that high costs &
risks mean that defendants
may settle even frivolous
suits (for hundreds of
thousands), just to swat the
mosquito
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
By the way, there is no
obligation to defend an unused
patent immediately
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
So the Patent Troll's target may
produce the patented product
for years before the Troll sues
them (Submarine Patent)
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
But aren't the costs of a pre-
emptive approach too high?
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
You’ll have the legal costs of
course:
• Application support
• Search
• Registration
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
But you’ll also have the
internal costs
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
For example, you’ll be
taking your best engineers
and sticking them in front of
a Word document
composing product
specifications (which they
hate doing) when they could
be out inventing the next
product!
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
That's where Collective
Defensive Patent
Aggregation (DPA) comes
into play
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
With Collective DPA, companies
agree to share the insurance
cost of pre-emption by forming
a joint Patent Pool where they
co-purchase patents as a joint
defence
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
This has a sneaky anti-
competition side effect as an
entry barrier to future
legitimate market actors
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
If 3-5 big players share the pool
of patents required to execute a
certain technology, they can
ensure that no future
competitors enter the market
because the licensing costs will
be too high
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Not naming any names, but
this works very well if you can
make it look like you are playing
nicely and helping to define an
industry standard (e.g.: IEEE)
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Sometimes we call the resulting
pool a patent fence or thicket
(which can be created by a single,
rich firm as easily as it can by a
group)
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
A Patent Fence is, as wikipedia says,
“a dense web of overlapping or
dependent intellectual property
rights that a competitor must hack
its way through in order to actually
commercialize new technology.“
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Alternatively an IP holder can build
a fence by patenting all mechanisms
to achieve the result – even if they
only actually use one of them in
practice
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
USYOU
YOU
YOU
PatentPatent
Patent
X
X X
This is all great for the big boys
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
But crap for you and me
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
So what are the little guys, on
little budgets, to do?
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Ultimately, if you are going to
play the IP game, you need to
find a hole in the patent fence
and innovate around patents
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Here is how it might work in
simple terms
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Let’s say that the original innovator
patents a product such as square,
connected to triangle, connected to
circle
Then they patent this
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Of course, despite the engineering,
the customer experiences the
product as the red outline
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
So the smart competitor delivers the
customer experience with a slightly
different design of 2 rectangles and 2
semi-circles
And patents the new solution
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
This can be achieved via reverse
engineering, or simply creative,
cheeky design
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Of course, big companies with
valuable/complex IP portfolios, or in
industries where IP has a profound
impact, closely monitor new
patents & patent applications (here
come the lawyers again)
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
These firms will maintain a patent
map/landscape, which is a
graphical model of patent
visualisation and will constantly
scan all new patent applications in
their area
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
In the process, they can play fun
games like misdirection or
vapourware
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
US
Misdirection
File pending patents that you don't intend to use to
trick competitor into moving into undesirable market
space
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Vapourware
Fake the process, but don't suffer the spend so that
your competitor goes into another market space to
avoid the fight
Patent
Patent
A smart IP Holder can also send
threatening letters (regardless of
the legitimacy of their claim)
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
For example, I’m an investor in a
company that was called Racerbook
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Some months ago, Facebook sent us
a threatening letter claiming
Trademark violation
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Despite the fact that we all felt
Facebook had no legal claim as the
businesses were very different…
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
We backed down and renamed the
company Racerlink
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
After all, who wants to fight
Facebook’s giant financial warchest
and their army of lawyers on staff,
who get paid salary no matter what
they do?!?!?!?!
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
But big companies will not only
fence off their playing field with
product (engineering) patents.
They will also patent manufacturing
process or delivery mechanisms
(especially for drugs)
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Further, companies may often buy
patents up & down the value chain
so that they cannot be held hostage
by suppliers who may use IP to
extract too much margin
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Consider the effects of Nokia’s
patents on loudspeakers
documented on Wikipedia
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Even though the company does not
engage in the production of cell-
phone components, it keeps a
handle on its suppliers by
maintaining control of key IP rights
in different segments of the value
chain
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Nokia has such patents not in order
to squeeze suppliers but to forearm
against price increases in an
upstream segment where
competition is not too high as there
is only a handful of suppliers
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
IP strategy can also impact
manufacturing
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Many companies break up the
process of manufacturing across
several manufacturing firms, each
one producing only part of the
whole product
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
This helps prevent manufacturers
(especially in weak IP enforcement
zones like China) from
learning/replicating all the key
secrets
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
IP can also be used as a branding
tool
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
If you show your customers and
analysts a vast IP portfolio, they will
assume that you are a cutting-edge
firm made up of really, freaking
smart people and that will bolster
your brand value
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
And don’t forget HR policies
Companies like Google use the
patenting process to lock-in their
best and brightest by allowing them
to co-patent inventions
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
This locks scientists in for the
duration and can be seen as an
incentive to the super geeks who
forgot they left university
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
Last but not least, you can
potentially earn quite a bit of
money in Civil cases
Licensing
Valuation
Tactics
Branding
Incentives
Litigation
And even if you don’t sue anyone,
you can get quite a bit of press by
leading high-profile raids!
PART 4
Beyond Intellectual Property
So, with all that said, there is also a
case that you shouldn’t waste your
time, efforts, and money on IP
For one, IP, especially patents, is
incredibly expensive to obtain, maintain,
monitor & enforce
But, even after all that expense,
the protection may only offer weak,
unenforceable protection
Especially if you are a little guy
In addition, once you leave the
cosy confines of Trade Secret, your
IP will only have a limited lifespan
as registering it means eventually
giving it up to the public domain
Plus your competitors can start
working on the workaround the
minute your invention is published
for the patent application
Further, depending on your
industry’s speed of innovation, by
the time you prepare for, and
obtain, protection, the market
moment may be passed
and one more thing…
if I may take my tie and cufflinks off for
a moment
IP is ethically immoral
But far more importantly, given
enforceability, the fact that IP must
flow into the public domain if it is to be
registered, and the exorbitant costs
associated with IP management, many
firms other than the big guys, may look
at the ROI and say….nah!
so what else will work?
CLIFF HANGER
ALERT!!!
Wanna find out about Better Barriers
to Entry?
Follow me on Slideshare
http://www.slideshare.net/selenasol/p
resentations
The next deck is coming…..
PART 5
IP Resources
Selling Wine without Bottles https://projects.eff.org/~barlow/EconomyOfIdeas.h
tml
What is the process for filing a
patent in the US?
http://www.uspto.gov/patents/process/ppo_texton
ly.jsp
What is the process for filing a
patent in Singapore?
http://www.ipos.gov.sg/AboutIP/TypesofIPWhatisIn
tellectualProperty/Whatisapatent/Applyingforapate
nt/ApplyingforapatentinSingapore.aspx
What do you do if someone
infringes your copyright?
http://www.copyright.gov/help/faq/faq-
infringement.html
What do you do if someone
infringes your patent?
http://www.beemlaw.com/video-gallery/what-if-
someone-is-infringing-your-patent
What do you do if someone
infringes your trademark?
http://en.wikipedia.org/wiki/Trademark_infringeme
nt
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& FOLLOW ME(please-oh-please-oh-please-oh-please)
stay up to date with my future
slideshare posts
http://www.slideshare.net/selenasol/presentations
https://twitter.com/eric_tachibana
http://www.linkedin.com/pub/eric-tachibana/0/33/b53
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Intellectual property for entrepreneurs

  • 1. MY DIRTY LITTLE START-UP SECRET INTELLECTUAL PROPERTY FOR LEGAL-O-PHOBEShttp://www.flickr.com/photos/wetfoto/
  • 2. PART 1…..…………….The Roots of Intellectual Property PART 2….……….……………Intellectual Property Law 101 PART 3.......Making Money from Intellectual Property PART 4……..………………….Beyond Intellectual Property PART 5………..………………………………………..IP Resources
  • 3. PART 1 The Roots of Intellectual Property
  • 4. Intellectual Property (IP) is a tactical management tool
  • 6. This is key because the most common mistake entrepreneurs make is to be awed, emotional, or self-righteous about IP, when they should be Machiavellian
  • 7. Intellectual Property is not one of your fundamental, natural rights
  • 8. As it so happens, it is a public policy that was crafted in 17th century Europe
  • 9. For kings, merchants, and clerics to divvy up the benefits of (and control) the newly invented printing press
  • 11. For tens of thousands of years of human history
  • 13. did not exist (*) (*) OK, super IP geeks, give me a break on this one. I’s more exciting if I state it this way, and, despite Ancient China and Senor Brunelleschi and all, it is true in the spirit of the argument
  • 14. Today, IP policy has evolved from its mercantile roots into a mechanism to accelerate innovation (patents and copyrights) and quality (trademarks)
  • 15. Here’s the basic Econ 101 party line
  • 16. If an inventor cannot reap the financial rewards from inventing, because someone else steals the ideas, the inventor will not spend the blood, sweat, and tears required to invent in the first place, and the whole growth machine grinds to a halt (patents & copyrights)
  • 17. If a pirate can pass themselves off as a quality brand, while producing cheaply, then there will be no incentive for the quality brand to invest in a quality product in the first place (trademark)
  • 18. So, to fend off future stagnation, governments strike a societal balance between the evils of monopoly and the benefits of innovation & quality
  • 19. At it’s core, modern IP is a legal framework that grants inventors a limited window of monopoly during which they can enjoy economic benefit
  • 20. Or in the words of the big dogs… “The Congress shall have the power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries” -Article I, Section 8 US Constitution
  • 23. Copyrights protect (artistic) expression of ideas
  • 24. Trademarks protect quality brands / market reputation
  • 25. But… To reiterate, ideas and inventions are not fundamental rights
  • 26. They are temporary grants, given for a specific societal benefit incentivization
  • 27. The ideas are not “yours”
  • 28. and you shouldn’t get attached to them
  • 29. and… if there are more effective ways to achieve the societal aims of incentivizing inventors, then we all shouldn’t get so hung up on IP
  • 30. But, one last word before we stop with all this philosophy crap
  • 31. There are also serious, potentially unresolvable problems with IP in today’s world
  • 32. Think of these as unwanted drug side- effects
  • 33. 1. Humanity was plenty inventive before 1600AD. The very assumption that inventors won’t invent without cash may be wrong from inception 2. The accelerated speed of invention prompted by the IP system may be dangerous for society in a larger sense 3. It may not be fair that ideas built on thousands of years of public domain are individually owned 4. IP enforcement is getting so hard that IP may be an unenforceable right (e.g.: digital piracy, different legal regimes from country to country, etc) 5. Given creativity & technology complexity and options, IP is increasingly easy to innovate around 6. What about squeegie topics like patenting your genes 7. IP is easily abused by the powerful (e.g.: bio piracy, First World wants versus Third World needs, etc…)
  • 34. But let’s leave it at that for now
  • 35. If you’re keen, you can join the rich discussions online about why IP is evil on your own
  • 36. For now, let’s make sure that we understand the IP regime, so that we can legally manipulate it to our maximum financial advantage as entrepreneurs
  • 37. as entrepreneurs are meant to do with all public policy
  • 40. But wait, isn't IP law something to leave to the lawyers?
  • 42. Did you know • By 1999, 75% of Fortune 100 total market cap was represented in intangible assets • Massive firm investments are required for IP creation and protection • We are living in a globalized knowledge economy • IP rights are key strategic and tactical levers in Competitive Strategy that can make or break firms
  • 43. IP is NOT something for your lawyers
  • 44. It is something for you
  • 45. How you manage IP is a critical part of corporate strategy and one of every manager's responsibilities
  • 46. Lawyers can help you proof read your legal documents
  • 47. and, if your lawyers are truly bad ass… they can even ask you tough, clarifying questions, or give you ideas from what they've learned in other cases
  • 48. but the terms of the deals are for you, the business, to define
  • 49. based on your strategic objectives
  • 50. OK, so what do you need to know about IP in order to do your job?
  • 51. At it's core, IP strategy (which is really just corporate strategy) defines how you manage 4 assets
  • 52. 1. Patents 2. Copyrights 3. Trademarks 4. Trade Secrets
  • 53. Each of these assets wraps a specific form of intangible value (like ideas or brand image) into a legal form that can be manipulated as any traditional, physical form of property
  • 54. In other words, IP turns the fluffy, intangible value into a tangible economic asset, that can be bought, sold, transferred, administrated, & adjudicated in a market place
  • 55. Each of these 4 types of IP asset can be understood in terms of 6 characteristics
  • 56. 1. What can be protected 2. How long do you get the protection for 3. What constitutes infringement 4. How do you enforce your rights 5. How do you punish infringers 6. What is the process required to obtain the asset, how long does it take, & how much does it cost
  • 57. Here's an example of what I mean
  • 58. PATENT COPYRIGHT TRADEMARK TRADE SECRET Scope Product of process Inventions that do something new FYI: Utility, Design, and Plant Patents cover a smaller scope Expression of an original idea (not the idea itself), whether in words or an "artistic" endeavor, 2-D or 3-D, static or performance Word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others. • not generally known to the public • confers some sort of economic benefit on its holder (benefit must derive specifically from its not being publically known, not just from the value of the info) • is the subject of reasonable efforts to maintain its secrecy Duration (before asset moves to public domain) 20 years from filing FYI: Various rules about the period between filing & securing a patent 70 years after the death of the author (work-for-hire up to 120 years) 10 years In the words of Bono, "a secret is something you tell one other person" Infringement Others may not make, use, sell, or import your invention Others may not reproduce, prepare derivatives, distribute, perform or display in public (fair use claim possible) Others may not use your trade mark (pretend to be you in the course of trade with customers to your detriment) Others may not use what they have learned unless as above for scope Enforcement Patent Infringement Action Civil suit or criminal misdemeanour / felony Lawsuit You may sue for Misappropriation Remedies Varies Usually injunction to stop infringing + damages + forfeit of remaining duplicates Usually injunction to stop infringing + damages Varies Process / Cost (see the last slide of this deck) Quite complex and potentially very expensive Easy and cheap You don't even need to register, though you can. None
  • 59. Of course, this is just an example
  • 60. despite international agreements like PCT, TRIPs, the Berne Convention, etc., all 6 characteristics will vary from country to country
  • 61. lawyers can help you answer questions about which laws apply where
  • 62. but for the lawyer to do much more, you’ll need to answer some fundamental questions
  • 63. 1. Where (in which countries) should I register, given my short, mid and long- term business/marketing plan 2. What is the right mix of protections to invest in, given expected market responses 3. How much should I (can I afford to) spend on IP registration, protection, & management given forecasted ROI and risk
  • 64. That’s the stuff the lawyer will have no idea about
  • 65. but it’s the stuff that really matters
  • 66. PART 3 Making Money from Intellectual Property
  • 67. with all that said, at the end of the day, the good entrepreneur has only one question
  • 68. how do I make money from all this?
  • 69. there are 6 ways (that I can think of) to squeeze value from IP
  • 70. 1. License Agreements 2. Valuation 3. Competitive Tactics 4. Branding 5. Internal Incentives 6. Litigation
  • 71. The most practical use for IP is to legally/formally establish an underlying asset that can be sold, borrowed, traded, or used as the basis for some economic transaction Licensing Valuation Tactics Branding Incentives Litigation
  • 72. And the legal mechanism that underlies the economic transaction involving IP is called a License Agreement Licensing Valuation Tactics Branding Incentives Litigation
  • 73. A License Agreement is a contract between an IP owner and an IP user Licensing Valuation Tactics Branding Incentives Litigation
  • 74. It defines the terms of the transaction Licensing Valuation Tactics Branding Incentives Litigation
  • 75. • What can the buyer do (or explicitly not do) with the asset • How much will the buyer pay for the asset and what are the terms of that payment • What other services come with the transaction (like support) • How long will the buyer enjoy these rights before they need to re-sign? • In which territories will the rights apply? • Etc… Licensing Valuation Tactics Branding Incentives Litigation
  • 76. For example, "for the agreed upon consideration (let's say 59.99), the user may download the software onto a single PC and use it for 3 years. She may also enjoy up to 3 support requests during the license term" Licensing Valuation Tactics Branding Incentives Litigation
  • 77. you know. when you get that Microsoft pop-up dialog with that long stream of blah-blah-blah text that you ignore and then quickly click "I agree" Licensing Valuation Tactics Branding Incentives Litigation
  • 78. That's a License Agreement Licensing Valuation Tactics Branding Incentives Litigation
  • 79. And you've just signed away your first-born child by clicking, "I accept" Licensing Valuation Tactics Branding Incentives Litigation
  • 80. Finally, note that the terms of a License Agreement can be as varied as the imaginations of the buyer and seller Licensing Valuation Tactics Branding Incentives Litigation
  • 81. Don't feel restricted to any template Licensing Valuation Tactics Branding Incentives Litigation
  • 82. The License terms are just your business model masquerading as a legal document Licensing Valuation Tactics Branding Incentives Litigation
  • 83. That's why License Innovation can be as profound as Product Innovation Licensing Valuation Tactics Branding Incentives Litigation
  • 84. Consider the earthquakes caused in the Software Industry by the innovation of the GNU General Public License – which was not technology (http://www.gnu.org/licenses/gpl.html) Licensing Valuation Tactics Branding Incentives Litigation
  • 85. IP can also form the underlying asset used to increase a company's valuation Licensing Valuation Tactics Branding Incentives Litigation
  • 86. Sometimes we refer to a company's, "goodwill value" Licensing Valuation Tactics Branding Incentives Litigation
  • 87. This "goodwill value" is the hypothetical value of a company's intangible assets including reputation, brand, Intellectual Property, etc Licensing Valuation Tactics Branding Incentives Litigation
  • 88. when valuing a company (in the case of acquisition for example), the goodwill value is added to the hard value of physical assets like buildings or inventories and the hard-ish value of financial forecasts Licensing Valuation Tactics Branding Incentives Litigation
  • 89. The goodwill value can be significant Licensing Valuation Tactics Branding Incentives Litigation
  • 90. We already mentioned the Fortune 500 stat earlier! Licensing Valuation Tactics Branding Incentives Litigation
  • 91. Since IP is one of a company's intangible assets, formalizing that IP through patents, copyrights, or trade marks can be helpful when arguing for goodwill value when your company is being valued Licensing Valuation Tactics Branding Incentives Litigation
  • 93. Just having a patent does not immediately raise your valuation, as start-up folklore might suggest Licensing Valuation Tactics Branding Incentives Litigation
  • 94. At the end of the day, you still need to explain what you are going to do with your IP….how you will convert the intangible value into cold, hard cash Licensing Valuation Tactics Branding Incentives Litigation
  • 95. There are also lots of fun, wonderfully-evil, Machievellian / Sun Tzu types of tactical games that companies play with IP for profit Licensing Valuation Tactics Branding Incentives Litigation
  • 96. Though, to be frank, these are more interesting for big companies rather than start- ups Licensing Valuation Tactics Branding Incentives Litigation
  • 97. The most basic IP tactic is the Pre-emptive strike Licensing Valuation Tactics Branding Incentives Litigation
  • 98. Which is basically… Patent before someone else does. Licensing Valuation Tactics Branding Incentives Litigation
  • 99. The thing is…. Even if you legitimately have the IP first, you don't want to get bogged down in a bunch of annoying lawsuits because some joker files and then starts causing trouble Licensing Valuation Tactics Branding Incentives Litigation
  • 100. Once you have the patent, you proactively fend off potential annoyance – like a bug spray Licensing Valuation Tactics Branding Incentives Litigation
  • 101. By proactively patenting, you'll also go through the Patent Search process Licensing Valuation Tactics Branding Incentives Litigation
  • 102. This helps ensure that there are no Submarine Patents or other bugs lurking out there that could come back to bite you when you are rolling in the dough Licensing Valuation Tactics Branding Incentives Litigation
  • 103. And these bugs can be VERY annoying Licensing Valuation Tactics Branding Incentives Litigation
  • 104. Consider Patent Trolls (non- practicing entity) Licensing Valuation Tactics Branding Incentives Litigation
  • 105. A Patent Troll is an aggressive, opportunist person /company that claims patents, often with no intention to manufacture or market the product AKA an A$$hole Licensing Valuation Tactics Branding Incentives Litigation
  • 106. The Patent Troll takes advantage of the fact that the cost of defending against a patent infringement suit, as of 2004, is typically $1 million or more before trial, and $2.5 million for a complete defence, even if successful https://en.wikipedia.org/wiki/Patent_troll Licensing Valuation Tactics Branding Incentives Litigation
  • 107. And worse yet, you never know what might happen when a jury is involved! Licensing Valuation Tactics Branding Incentives Litigation
  • 108. Trolls know that high costs & risks mean that defendants may settle even frivolous suits (for hundreds of thousands), just to swat the mosquito Licensing Valuation Tactics Branding Incentives Litigation
  • 109. By the way, there is no obligation to defend an unused patent immediately Licensing Valuation Tactics Branding Incentives Litigation
  • 110. So the Patent Troll's target may produce the patented product for years before the Troll sues them (Submarine Patent) Licensing Valuation Tactics Branding Incentives Litigation
  • 111. But aren't the costs of a pre- emptive approach too high? Licensing Valuation Tactics Branding Incentives Litigation
  • 112. You’ll have the legal costs of course: • Application support • Search • Registration Licensing Valuation Tactics Branding Incentives Litigation
  • 113. But you’ll also have the internal costs Licensing Valuation Tactics Branding Incentives Litigation
  • 114. For example, you’ll be taking your best engineers and sticking them in front of a Word document composing product specifications (which they hate doing) when they could be out inventing the next product! Licensing Valuation Tactics Branding Incentives Litigation
  • 115. That's where Collective Defensive Patent Aggregation (DPA) comes into play Licensing Valuation Tactics Branding Incentives Litigation
  • 116. With Collective DPA, companies agree to share the insurance cost of pre-emption by forming a joint Patent Pool where they co-purchase patents as a joint defence Licensing Valuation Tactics Branding Incentives Litigation
  • 117. This has a sneaky anti- competition side effect as an entry barrier to future legitimate market actors Licensing Valuation Tactics Branding Incentives Litigation
  • 118. If 3-5 big players share the pool of patents required to execute a certain technology, they can ensure that no future competitors enter the market because the licensing costs will be too high Licensing Valuation Tactics Branding Incentives Litigation
  • 119. Not naming any names, but this works very well if you can make it look like you are playing nicely and helping to define an industry standard (e.g.: IEEE) Licensing Valuation Tactics Branding Incentives Litigation
  • 120. Sometimes we call the resulting pool a patent fence or thicket (which can be created by a single, rich firm as easily as it can by a group) Licensing Valuation Tactics Branding Incentives Litigation
  • 121. A Patent Fence is, as wikipedia says, “a dense web of overlapping or dependent intellectual property rights that a competitor must hack its way through in order to actually commercialize new technology.“ Licensing Valuation Tactics Branding Incentives Litigation
  • 122. Alternatively an IP holder can build a fence by patenting all mechanisms to achieve the result – even if they only actually use one of them in practice Licensing Valuation Tactics Branding Incentives Litigation
  • 124. This is all great for the big boys Licensing Valuation Tactics Branding Incentives Litigation
  • 125. But crap for you and me Licensing Valuation Tactics Branding Incentives Litigation
  • 126. So what are the little guys, on little budgets, to do? Licensing Valuation Tactics Branding Incentives Litigation
  • 127. Ultimately, if you are going to play the IP game, you need to find a hole in the patent fence and innovate around patents Licensing Valuation Tactics Branding Incentives Litigation
  • 128. Here is how it might work in simple terms Licensing Valuation Tactics Branding Incentives Litigation
  • 129. Let’s say that the original innovator patents a product such as square, connected to triangle, connected to circle Then they patent this Licensing Valuation Tactics Branding Incentives Litigation
  • 130. Of course, despite the engineering, the customer experiences the product as the red outline Licensing Valuation Tactics Branding Incentives Litigation
  • 131. So the smart competitor delivers the customer experience with a slightly different design of 2 rectangles and 2 semi-circles And patents the new solution Licensing Valuation Tactics Branding Incentives Litigation
  • 132. This can be achieved via reverse engineering, or simply creative, cheeky design Licensing Valuation Tactics Branding Incentives Litigation
  • 133. Of course, big companies with valuable/complex IP portfolios, or in industries where IP has a profound impact, closely monitor new patents & patent applications (here come the lawyers again) Licensing Valuation Tactics Branding Incentives Litigation
  • 134. These firms will maintain a patent map/landscape, which is a graphical model of patent visualisation and will constantly scan all new patent applications in their area Licensing Valuation Tactics Branding Incentives Litigation
  • 135. In the process, they can play fun games like misdirection or vapourware Licensing Valuation Tactics Branding Incentives Litigation
  • 136. Licensing Valuation Tactics Branding Incentives Litigation US Misdirection File pending patents that you don't intend to use to trick competitor into moving into undesirable market space
  • 137. Licensing Valuation Tactics Branding Incentives Litigation Vapourware Fake the process, but don't suffer the spend so that your competitor goes into another market space to avoid the fight Patent Patent
  • 138. A smart IP Holder can also send threatening letters (regardless of the legitimacy of their claim) Licensing Valuation Tactics Branding Incentives Litigation
  • 139. For example, I’m an investor in a company that was called Racerbook Licensing Valuation Tactics Branding Incentives Litigation
  • 140. Some months ago, Facebook sent us a threatening letter claiming Trademark violation Licensing Valuation Tactics Branding Incentives Litigation
  • 141. Despite the fact that we all felt Facebook had no legal claim as the businesses were very different… Licensing Valuation Tactics Branding Incentives Litigation
  • 142. We backed down and renamed the company Racerlink Licensing Valuation Tactics Branding Incentives Litigation
  • 143. After all, who wants to fight Facebook’s giant financial warchest and their army of lawyers on staff, who get paid salary no matter what they do?!?!?!?! Licensing Valuation Tactics Branding Incentives Litigation
  • 144. But big companies will not only fence off their playing field with product (engineering) patents. They will also patent manufacturing process or delivery mechanisms (especially for drugs) Licensing Valuation Tactics Branding Incentives Litigation
  • 145. Further, companies may often buy patents up & down the value chain so that they cannot be held hostage by suppliers who may use IP to extract too much margin Licensing Valuation Tactics Branding Incentives Litigation
  • 146. Consider the effects of Nokia’s patents on loudspeakers documented on Wikipedia Licensing Valuation Tactics Branding Incentives Litigation
  • 147. Even though the company does not engage in the production of cell- phone components, it keeps a handle on its suppliers by maintaining control of key IP rights in different segments of the value chain Licensing Valuation Tactics Branding Incentives Litigation
  • 148. Nokia has such patents not in order to squeeze suppliers but to forearm against price increases in an upstream segment where competition is not too high as there is only a handful of suppliers Licensing Valuation Tactics Branding Incentives Litigation
  • 150. Licensing Valuation Tactics Branding Incentives Litigation Many companies break up the process of manufacturing across several manufacturing firms, each one producing only part of the whole product
  • 151. Licensing Valuation Tactics Branding Incentives Litigation This helps prevent manufacturers (especially in weak IP enforcement zones like China) from learning/replicating all the key secrets
  • 153. Licensing Valuation Tactics Branding Incentives Litigation If you show your customers and analysts a vast IP portfolio, they will assume that you are a cutting-edge firm made up of really, freaking smart people and that will bolster your brand value
  • 154. Licensing Valuation Tactics Branding Incentives Litigation And don’t forget HR policies Companies like Google use the patenting process to lock-in their best and brightest by allowing them to co-patent inventions
  • 155. Licensing Valuation Tactics Branding Incentives Litigation This locks scientists in for the duration and can be seen as an incentive to the super geeks who forgot they left university
  • 156. Licensing Valuation Tactics Branding Incentives Litigation Last but not least, you can potentially earn quite a bit of money in Civil cases
  • 157. Licensing Valuation Tactics Branding Incentives Litigation And even if you don’t sue anyone, you can get quite a bit of press by leading high-profile raids!
  • 159. So, with all that said, there is also a case that you shouldn’t waste your time, efforts, and money on IP
  • 160. For one, IP, especially patents, is incredibly expensive to obtain, maintain, monitor & enforce
  • 161. But, even after all that expense, the protection may only offer weak, unenforceable protection Especially if you are a little guy
  • 162. In addition, once you leave the cosy confines of Trade Secret, your IP will only have a limited lifespan as registering it means eventually giving it up to the public domain
  • 163. Plus your competitors can start working on the workaround the minute your invention is published for the patent application
  • 164. Further, depending on your industry’s speed of innovation, by the time you prepare for, and obtain, protection, the market moment may be passed
  • 165. and one more thing…
  • 166. if I may take my tie and cufflinks off for a moment
  • 167. IP is ethically immoral
  • 168. But far more importantly, given enforceability, the fact that IP must flow into the public domain if it is to be registered, and the exorbitant costs associated with IP management, many firms other than the big guys, may look at the ROI and say….nah!
  • 169. so what else will work?
  • 171. Wanna find out about Better Barriers to Entry? Follow me on Slideshare http://www.slideshare.net/selenasol/p resentations The next deck is coming…..
  • 173. Selling Wine without Bottles https://projects.eff.org/~barlow/EconomyOfIdeas.h tml What is the process for filing a patent in the US? http://www.uspto.gov/patents/process/ppo_texton ly.jsp What is the process for filing a patent in Singapore? http://www.ipos.gov.sg/AboutIP/TypesofIPWhatisIn tellectualProperty/Whatisapatent/Applyingforapate nt/ApplyingforapatentinSingapore.aspx What do you do if someone infringes your copyright? http://www.copyright.gov/help/faq/faq- infringement.html What do you do if someone infringes your patent? http://www.beemlaw.com/video-gallery/what-if- someone-is-infringing-your-patent What do you do if someone infringes your trademark? http://en.wikipedia.org/wiki/Trademark_infringeme nt
  • 174. SHARE THIS DECK & FOLLOW ME(please-oh-please-oh-please-oh-please) stay up to date with my future slideshare posts http://www.slideshare.net/selenasol/presentations https://twitter.com/eric_tachibana http://www.linkedin.com/pub/eric-tachibana/0/33/b53 Please note that all content & opinions expressed in this deck are my own and don’t necessarily represent the position of my current, or any previous, employers
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