Explores: - How do I make sure I own the IP? - Do I need agreements with founders? - What agreements do I need with employees, consultants and advisors? - How important are confidentiality agreements?

1. Harlem Biospace Seminar:
Protecting Your Assets
Jen Berrent
Todd Anderman
February 3, 2014
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2. Protecting Your Assets
Topics
 How do I make sure I own the IP?
 Do I need agreements with founders?
 What agreements do I need with employees, consultants and
advisors?
 How important are confidentiality agreements?
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3. How do I make sure I own the IP?
By contract!
 Licenses
 Assignment of inventions
 Confidentiality
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4. Do I need agreements with founders?
Founders sign agreements to make sure the company
is separate from the individuals so that it can
incentivize founders but survive a departure
 Invention, Non-Disclosure, Non-Competition and NonSolicitation Agreement
– Founder Services Agreement (non-employee founders)
 Restricted Stock Agreement
– For “founder stock”
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5. What agreements do I need with
employees, consultants and advisors?
Sign agreements covering:
 Services to be provided
 Term of engagement
 Restrictive covenants
 Ownership of inventions
 Confidentiality
 Grant and vesting of equity
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6. What agreements do I need with
employees, consultants and advisors?
Services and Other Terms
 Employees
– Offer Letter
– Invention and Non-Disclosure Agreement
– Non-Competition and Non-Solicitation Agreement
 Consultants
– Consulting Agreement
 Advisors
– Advisory Board Letter
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7. What agreements do I need with
employees, consultants and advisors?
Equity
 Employees
– Restricted Stock Agreement (executives only)
– Stock Option Agreement (incentive or non-statutory)
 Consultants
– Non-statutory Stock Option Agreements (individuals only)
– Warrants (entities)
 Advisors
– Non-statutory Stock Option Agreements
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Representative Office. This material is for general informational purposes only and does not represent our advice as to any particular set of facts; nor does it represent any undertaking to
keep recipients advised of all legal developments. Prior results do not guarantee a similar outcome. © 2014 Wilmer Cutler Pickering Hale and Dorr LLP
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