Entrepreneurs build their businesses, their competitive advantage, and their long-term defensibility around a core of intellectual property. For some entrepreneurs, that will mean a patent portfolio. For many others, however, it will mean a sticky web of trademarks, trade dress rights, copyright, know-how, trade secrets, contractual exclusivity, and non-disclosure agreements. Our experts will help entrepreneurs untangle common and critical intellectual property issues to help them with business planning and with explaining the investment proposition and risks to investors.

1. Nutter McClennen & Fish LLP
Seaport West
155 Seaport Boulevard
Boston, Massachusetts 02210
Telephone 617.439.2000
nutter.com
Building Your IP Strategy – The Teaser…
March 10, 2015
Derek Roller, Nutter McClennen & Fish LLP

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Types of Intellectual Property
• Patents
• Trademarks/Trade Dress
• Copyrights
• Trade Secrets
• Employment Agreements & NDAs

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What is an IP Strategy?
Short
Term
Business
Goals
$
Long Term
Business
Goals
Marketplace
&
Competitors
Technical
Need
Timing
A roadmap of how IP will support the business

4. What do you want to know about?
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We’d love to tailor the discussion to
your interests and concerns!

5. Potential topics abound!
• Development of an IP strategy
• Identifying and evaluating innovations
• Working with attorneys/agents
• Funding for development and execution
• Creation of a document
• Working IP into the culture
• Getting your engineers to think about IP
• Reviewing competitor work
• Design-around brainstorming
• Rewarding innovation
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6. More topics
• Use of IP in fundraising
• Highlighting assets for investors
• Showing mature thought processes and comprehensive planning
• Usefulness in diligence
• Constant adaptation with business
• Changing focus, prioritization with business goals
• Periodic review of strategy
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7. More topics
• Building portfolio intelligently
• Prioritization of innovations/applications
• Selective use of expediting options in US and abroad
• Selective foreign prosecution – in view of protection viability and
desirability
• Freedom to Operate
• Necessary?
• When?
• How to approach
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8. More topics
• Role in Exit
• Clean package – no loose ends
• Company owns assets
• Employment agreements, NDA’s, etc. in place
• Patents
• The America Invents Act and change to First to File
• Provisionals
• Defensive publications
• On sale bar
• Options for expediting prosecution
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9. More topics
• Trademarks
• Searching and clearing potential marks
• Registration before actual use
• Developing a brand
• Copyrights
• Claiming copyright in written materials
• Open source concerns
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10. More topics
• Trade Secrets
• Evaluating vs. other IP
• Ensuring you are adequately protecting
• Contracts with vendors/suppliers/employees
• Contracts
• IP ownership with company
• Non-compete provisions where possible
• NDA’s with suppliers/vendors
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Please join us for more on April 23, 2015