The document discusses the importance of intellectual property (IP) for businesses, highlighting its significant financial value and the risks associated with IP theft, which costs U.S. companies $250 billion annually. It emphasizes the necessity for startups to protect their IP through various strategies, such as registration, licensing, and legal consultations, while debunking common misconceptions about IP. Furthermore, the document outlines common mistakes in IP management and suggests methods for valuing and structuring licensing agreements.

1. Leverage Your Assets
Melissa Jaffe Mary Juetten
Presented by

2. Entrepreneurs’ World

3. Innovation Capture is Hard

4. Got Intellectual Property?
Why Care…
• IP theft costs US companies $250
billion annually
• 100% of all companies have IP
• 700K new startups annually vs. 20%
protected IP after 1st year
• IP is most valuable asset > 90% and
not on your Balance Sheet
• Exclude competition; Attract
investment (incl. crowdfunding);
Leverage & license
• Avoid IP loss, infringement, or
business failure
Disclaimer: This is intended to be general information. Nothing in this presentation constitutes
legal advice. Please consult with an attorney before making any intellectual property protection
decisions.

5. What is IP?
• Patents (utility & design)
• Copyright ©
• Trademark/Service mark TM SM ®
• Trade secrets – unsung heroes
NO legal advice provided!

6. IP Misconceptions
• IP is just for Tech Startups or Tech companies & Patents are the only
IP for inventors.
• Trade secrets are the easiest to
protect because there is no
registration.
• You can copy anything without
a copyright ©
• You can copyright an idea.
• Domain = TM
• If I pay for it, I own it.
• Patents means right to make or sell.

7. WHO: IP Ownership Challenges
• Multiple Inventors
• Who you are? Employee of another company
• Proper Assignment of IP Rights – personal versus company
• Assume that Ownership automatically extends outside the US

8. • Idea
• URL
• Name
• Know how
• Employees
• Contractors
Startup Info

9. Strategies to Protect IP
• Do it Yourself:
– USPTO.gov
– Copyright.gov
• Hire a Professional:
– Attorney, Consultant, Legal
Zoom, Rocket Lawyer
• Secrets:
– Notary, IP Vault, Copyright software

10. Ignorance is NOT a Defense
Be Careful:
Video
Copy
Images
Music

11. READ READ READ
Read License & Permission to Use

12. Leveraging IP
The lifecycle of contracts regarding
Intellectual Property (IP) between
businesses.
Business + IP
© 2014 Law Offices of Melissa B. Jaffe, PC
Licensing:

13. Leveraging IP
BUSINESS:
“Someone
Doing Something
For Someone Else
In Exchange for
Something”
Facebook: Tao of Business Law
© 2014 Law Offices of Melissa B. Jaffe, PC

14. Leveraging IP
ARE YOU IN BUSINESS?
- Commitment
- Finances
- Goals/ Exit Strategy
© 2014 Law Offices of Melissa B. Jaffe, PC

15. Leveraging IP
Business Mistake #1: Failure to incorporate
Major benefit = Limitation on liability
© 2014 Law Offices of Melissa B. Jaffe, PC

16. Leveraging IP
Business Mistake #2:
Improper entity
- How many people are joining
together?
- Are appropriate documents drafted
& filed (i.e. Buy-Sell Agreement;
Operating Agreement, etc.)
© 2014 Law Offices of Melissa B. Jaffe, PC

17. Leveraging IP
Business Mistake #2:
Improper entity & failure to register
with state and local authorities
- Default = Partnership
- LLC = typically the most flexible
- (C) corporation often most restrictive
© 2014 Law Offices of Melissa B. Jaffe, PC

18. Leveraging IP
Business Mistake #3:
**S-L-O-W D-O-W-N**
- Brainstorm potential markets and
uses
- Be honest with your emotional and
energetic commitments
- Stay flexible
- Create an endeavor that will work for
YOU
© 2014 Law Offices of Melissa B. Jaffe, PC

19. Leveraging IP
© 2014 Law Offices of Melissa B. Jaffe, PC
Licensing Mistake #1:
NO BOILERPLATE LICENSE!
- You will not save money or time by
using another company’s license.

20. Leveraging IP
© 2014 Law Offices of Melissa B. Jaffe, PC
Licensing Mistake #2:
Failure to accurately determine value
- Scope of media;
- Scope of geography;
- Value to bottom-line of potential
licensee;
- Scope of time

21. Leveraging IP
© 2014 Law Offices of Melissa B. Jaffe, PC
Licensing Mistake #3:
No game plan/ strategy drafted into
license agreements
Solution:
- Use “Phases” or Milestones to gauge
success and
- Allow for easy termination
- Tie payments to desired outcomes as
much as possible

22. Leveraging IP
© 2014 Law Offices of Melissa B. Jaffe, PC
Licensing Agreements:
PAYMENT OPTIONS:
- Lump-Sum upfront payment;
- Front loaded payment;
- Royalty;
- Performance-based;
- Cascading/ Waterfall provision;
- Etc.

23. Leveraging IP
© 2014 Law Offices of Melissa B. Jaffe, PC
Licensing Agreements:
PAYMENTS:
- If royalty based, include Accounting
provision;
- If International, be certain to state
conversion or type of currency (ie US
dollars)
- Provide for bond if necessary after
due diligence

24. Leveraging IP
© 2014 Law Offices of Melissa B. Jaffe, PC
Licensing Agreements:
Exclusive v Non-Exclusive:
- Exclusive is more “valuable”;
- If permitted to sub-license, be certain
to include specific indemnification
provision

25. Licensing
BUSINESS:
“Someone
Doing Something
For Someone Else
In Exchange for
Something”
© 2014 Law Offices of Melissa B. Jaffe, PC

26. Licensing
Example 1:
Idea: water bottle nipple attachment for
babies
© 2014 Law Offices of Melissa B. Jaffe, PC

27. Licensing
Market:
- Young parents
- Caretakers
- Grandparents
- People shopping for moms (“gift
market”)
Etc.
- Other babies? Gag gifts?
© 2014 Law Offices of Melissa B. Jaffe, PC

28. Licensing
Potential Licensees:
- Gerber
- Green Sprouts
- Evenflo
- Gag gift developers
- Others…
© 2014 Law Offices of Melissa B. Jaffe, PC

29. Licensing
Possible License Strategy:
- Several licenses in different
countries;
- Performance-based (i.e. if achieve
milestone of $100k in revenue by
end of year 1, then automatic license
for another year. If under $100k,
termination with 90 days notice by
Licensor.
© 2014 Law Offices of Melissa B. Jaffe, PC

30. Leveraging IP
© 2014 Law Offices of Melissa B. Jaffe, PC
Customized Packages:
Example 1
- EIN
- TM Review
- 2 hr. consult
- 1 Agreement draft
- Redlines
Example 2
- Operating Agreements, etc.
- Business Plan Review
- Strategic Plan
- Additional Contract
- Redlines
CONTACT: 503.780.6565
WWW.MBJAFFELAW.COM

31. Leveraging IP
© 2014 Law Offices of Melissa B. Jaffe, PC
THANK YOU!
Facebook: Law Offices of Melissa B. Jaffe, PC
Phone:503.780.6565
Email: Melissa@mbjaffelaw.com
@MelissaBJaffe

32. Questions?
mejuetten@traklight.com
@traklight
IDENTIFY. PROTECT. SUCCEED.
www.traklight.com
Mary Juetten