This presentation lays out basic information and topics for early stage start-ups to consider concerning intellectual property, such as patents, trademarks, and copyrights. For more information and resources, visit www.suiter.com. Matt Poulsen is a patent attorney and co-owner of Suiter Swantz IP. He represents clients including large Fortune 500 companies, universities, start-up companies and individual inventors. His practice is generally focused on IP procurement and protection, including U. S. and foreign patent preparation and prosecution, patentability and freedom-to-operate analysis and various trademark, copyright and trade secret matters. Matt also advises clients with respect to various start-up related activities, such early-stage IP strategy. Matt is admitted to the Nebraska Supreme Court and the U.S. District Court, District of Nebraska, and is registered to practice before the United States Patent and Trademark Office.

1. BOOTSTRAPPING
INTELLECTUAL
PROPERTY
PROTECTION
MATT POULSEN
PATENT ATTORNEY
Lincoln Startup Week
2018

2. INTELLECTUAL PROPERTY
Patent Trademark
Copyright Trade Secret

3. BASELINE CONSIDERATIONS
 Cost-Benefit Analysis
 Are there Critical Timing
Requirements?

4. PATENTS

5. WHY DO COMPANIES GET
PATENTS?
 Provides Limited Monopoly
 Defensive Tool
 Investors Prefer Them
 Makes Acquisition Easier

6. STATISTICS
 80% of a company’s value is in intangible assets
 40% of startups hold patents and 80% of startups
receiving venture capital hold patents
 On average tech startups receive $535,000 more in
investment per patent
 Startups with patents are 35 times more likely to
experience “high growth”
 Correlation or causation?
 Business tool not a magic bullet/shield

7. GENERAL COST INFORMATION
 Patent:
 $10-20k (spread over 2-3 years)
 Trademark:
 $1000-2000 (spread over 1-2 years)
 Copyright:
 $200-500

8.  Protects: Any new, useful and non-obvious
machine, process, article of manufacture or
composition of matter
 Types: utility, design, and plant
 Limited Term (20 years utility/15 years design)
 Inventors are presumptive owners of patent so
get assignments!
PATENTS DEFINED

9. WHAT IS A PATENT…REALLY?
1. A method of controlling an electronic device with a
touch-sensitive display, comprising:
detecting contact with the touch-sensitive display while
the device is in a user-interface lock state;
moving an unlock image along a predefined displayed
path on the touch-sensitive display in accordance
with the contact, wherein the unlock image is a
graphical, interactive user-interface object with which
a user interacts in order to unlock the device;
transitioning the device to a user-interface unlock state
if the detected contact corresponds to a predefined
gesture; and
maintaining the device in the user-interface lock state if
the detected contact does not correspond to the
predefined gesture.

10.  Is innovation eligible for patent protection?
 Is innovation patentable?
 Self-barring events (public disclosure, use, sale)
 Where do you need protection?
 Are you infringing on someone else’s patent?
BASIC QUESTIONS

11. SPECTRUM OF PATENT ELIGIBILITY
Eligible Ineligible

12. POTENTIAL SELF-BARRING
EVENTS
 Public Disclosure
 Website
 Pitches (if public)
 Conferences
 Grant Applications (in some cases)
 Public Use
 Public use doesn’t mean “publicly known”
 Offer for Sale
 *U.S. theoretically has a 1-year grace period
(many countries do not)

13. PROVISIONAL PATENT
APPLICATION
 Allows for “bootstrapping”
 Can quickly avoid barring event
 Cheaper and less formal than non-provisional
patent application
 Can file multiple PPAs (helps with “pivoting”)
 Non-provisional must be filed within 1 year of
earliest PPA

14. FOREIGN FILING
 Is foreign filing needed?
 Must be filed within 1 year of earliest filing date
 Multiple options:
 PCT provides a placeholder option (“international
app”)
 Filing direct into selected country via Paris
Convention
 Patent applications are prosecuted in each
individual country

15. PATENT PROCESS
PATENT
SEARCH
FILE PPA(s)
FILE NPA W/IN
1 YEAR OF PPA
FILE PCT W/ IN
1 YEAR OF PPA
FILE NATIONAL
STAGE W/IN 30
MOS. OF PPA
PROSECUTE IN
INDIVIDUAL
COUNTRIES
DISCLOSURE

16. PATENT TAKEAWAYS
 Have a plan before public disclosure
 Do you need a patent? Where? When?
 Search to determine if innovation is “patentable”
before filing (see Google Patents)
 Use PPA(s) to bootstrap IP protection
 IP provisions in all employment/contractor
agreements
 Be aware of patents owned by others

17. TRADEMARKS

18. TRADEMARKS DEFINED
 Protects: Any artifice indicating the source of a
good or service
 Federal and Common Law trademarks
 Must show “use in commerce” and must be tied
to commercial activity
 “Use in Commerce” establishes priority
 Can file federal TM application as “in use” or as
“intent to use”
 No barring events

19. BASIC QUESTIONS
 Are you using the mark?
 Strength of the mark?
 Fanciful marks – good
 Generic marks - bad
 Are there prior similar marks:
http://tmsearch.uspto.gov/
 Likelihood of Confusion?

20. COPYRIGHTS

21. COPYRIGHTS DEFINED
 Protects: Any original work of authorship fixed in
a tangible medium of expression
 Copyright protection is automatic and
registration is not required
 Register valuable copyrightable material
relevant to business
 Prior to infringement or w/in 3 mos. of publication
 Registered copyrights provide certain
advantages in federal court

22. BASIC QUESTIONS
 Is copyright protection appropriate?
 Is the work worth registering?
 When was work published?
 Is there any known infringement?
 Statutory damages may be available
 Is a work-for-hire agreement needed?

23. TRADE SECRETS
 Reasonable efforts to keep information
secret
 Must hold independent economic value
because it is secret
 Does not expire
 Does not protect against reverse
engineering
 Federal Trade Secrets Act of 2016

24. Matt Poulsen: map@suiter.com