This document provides an overview of intellectual property concerns for startups and small businesses. It discusses the most common forms of intellectual property including trademarks, patents, copyrights, and trade secrets. Key topics covered include choosing a business name, protecting websites as assets, controlling online presence through domains and social media, planning for patent protection, being defensive through searches and analysis, preserving funds, understanding fair use, maintaining trade secrets, due diligence, and developing an IP strategy. The document concludes by inviting questions.

1. Intellectual Property for Start-Ups and
Small Businesses:
Top 10 and Q&A Series
Jill N. Link
McKee, Voorhees & Sease, PLC
801 Grand Avenue, Suite 3200
Des Moines, Iowa 50309
515-288-3667
jill.link@ipmvs.com

2. Overview
• Most common intellectual property
concerns for start-ups
• under appreciated or unappreciated
• Opportunities for protecting intellectual
property assets
• Q&A

3. Intellectual Property
Utility
patent(s)
Domain Design
name patent(s)
Product or
Copyright Innovation Trademark(s)
Trade secret Trade dress

4. COMPARISON OF MAJOR FORMS OF IP
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5. 1. Choosing a Business Name
• Trademark protection
– New name, rebranding, launching new goods or
services
• Quality of name impacts protection
– You impact strength of mark before “goodwill”
and “reputation” are established

6. 1. Choosing a Business Name
• Be distinctive, fanciful or arbitrary!
– Fanciful - “coined” words, invented or selected
for sole purpose of trademark
– Arbitrary - ordinary meaning of word is arbitrary
and non-descriptive for the good or service
– Suggestive – merely suggests character or
quality
– Descriptive - describes character or quality
(weak protection)
– Generic - common, ordinary word for a product
(no protection)

7. 1. Choosing a Business Name
• Trademark rights exist from time the mark is
used in connection with goods or services
– Common law - geographic markets
– State registration
– Federal registration - national protection against
subsequent users
• Confirm availability
– Online search / screening
– Trademark search (rights of others)

8. Using trademark symbols
“TM”, “SM” and “®”
• Anyone who claims rights on a mark may use the
"TM" (trademark) or "SM" (service mark)
designation to alert the public to the claim. It is
not necessary to have a registration or even a
pending application to use these
®
• The registration symbol “ “ may be used ONLY
when the mark is registered with the USPTO. It is
improper to use this symbol at any point before
the registration issues

9. 2. Websites are Assets
• URL may be and/or contain a trademark
– Allows you to prevent similar domain names
• Work contained on site is your copyrighted
material
– Literary, pictorial, graphic, software, etc.
– Protection lasts for the author’s life + 70 years
(works created on or after 1/1/78)
– Add notice to website
• ©2013 McKee, Voorhees & Sease, PLC

10. 2. Websites are Assets
• If you create (or pay for it) – OWN IT!
– If another creates on your behalf – require
copyright assignment
• Just because you hire/pay someone to
write/create/design for you, it does NOT
mean you own the copyright in the work
– You ONLY own the physical object you paid for
– You CANNOT make copies of it!

11. 2. Websites are Assets
• The copyright in the work immediately
becomes the property of the author that
created the work
– Exception 1: work for hire – copyright owned by
employer instead of the employee
– Exception 2: you agree otherwise in writing (i.e.
make it a work for hire)

12. 3. Control your Online Presence
• Manage your Domains
• Register all Domains that contain Trademarks
– Decrease risk of “cybersquatting”
• Monitor other Websites
– New gTLD extensions go live in 2013
– “.DEALS” “.XXX”, etc.
• Have a “Take Down” Strategy
• Monitor 3rd Party Keyword Advertising
– eBay, Google ad words, counterfeit products

13. 4. Be “Social”
• Register your usernames ASAP
• Understand risks and rewards of social media
• Rewards
– Trademarks can penetrate market – quicker path to
establishing reputation and goodwill
– Accessibility to interstate commerce
• Risks
– Failure to monitor “@yourbrand”, false social network
presence, unopposed disparagement of your
brand/products

14. 5. Plan for Patent Protection
• Establish IP Guidelines to Identify,
Protect, and Maintain IP
– Focus on Protecting early on….
– Control (or avoid) classic blunders
• “Statutory bars” to patent
– E.g. to preserve patent filing rights in the U.S. (we still have a 1
year “grace period”) and internationally (assume “absolute
novelty” – some exceptions)
• Consider all publications, offers for sale / sale, public
use, advertising, product launch

15. STEPS TO PROTECTING IP
DOCUMENT YOUR IP
THEN DISTILL DOWN
--What are free to practice?
--What appears likely can be protected?
THEN DECIDE WHAT TO DO
--Keep a Trade Secret?
--File for patent/copyright/trademark protection?
--Dedicate to public?
Do nothing?
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16. 5. Plan for Patent Protection
• Provisional vs. Regular patent
applications vs. Trade secret
• Be aware of U.S. Patent Reform
– It’s finally here!
– New Rules (Effective March 16, 2013)
• First to file at the U.S. Patent Office wins, unless
– another derived the patent from your earlier work (must
prove)

17. 5. Plan for Patent Protection
• But ….. there are other ways to protect IP
– Trade secret vs. patent
– Design Patents
– Copyrights
– Trademarks
– Contracts
• Confidentiality agreements
• Material transfer agreements
• Corporate research agreements
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18. 6. Be on the Defensive
• Patent and Trademark Searches
• Freedom to operate (FTO) or Right to use
(RTU) analysis
– New goods or services
– Ideas from former employees
– Your own “knock-off” or “design around”

19. 7. Preserving Funds
• Does the “poor man’s
copyright/trademark/patent” work?
• Copyright
– Mail a letter to yourself containing work
• Provisional Patent Applications
– Pay less now, more later….
– A corresponding non-provisional application for
patent must be filed during the 12-month pendency
period in order to receive the benefit of the earlier
filing date of the provisional application

20. 7. Preserving Funds
• Micro Entity Status = reduced patent fees
– Eligible for 75% fee reduction
– In addition to “small entity” status (50% reduction)
• Eligibility:
– Gross income < 3x median income (e.g. $49,445 in
2010); and
– Filed fewer than 4 patent applications
or
– Assigning invention to higher education institution

21. 8. Understand Fair Use
• Assume copyright protection – for (almost)
everything
• Avoid unauthorized …
– File sharing
– Downloading
– Cut/paste
– Reposting
– Commercial use of ANYTHING you did not create (or
pay for with assignment of rights)
– Adapting without permission
– Beyond scope of a license

22. 8. Understand Fair Use
• What is protected under fair use?
– Commentary
– Criticism
– Parody (but be ready for a challenge)
– Education and research = non-commercial
– News Reporting
– Quotation or excepts of another’s work

23. 8. Understand Fair Use
• Common Myths
– if it’s on the internet it is in the public domain and
therefore free
• This includes content on social media –
Facebook, Twitter, Instagram
– if there is no copyright notice, I can use the image
– if I alter the image I don’t need permission
– if I don’t profit from it, I can use it
– if I only use a part of the image I don’t need
permission

24. 8. Understand Fair Use
• Why Should I Care?
– substantial monetary damages can be
awarded (actual damages; profits)
– statutory damages ($750-$30,000 and up to
$150,000 if the infringement was willful)
– the infringing use can be enjoined
– attorney’s fees

25. 9. Keep it a Secret!
• Trade Secrets—protection of ideas plus….
• Information which, if known to a
competitor, could provide an unfair
competitive advantage
» Gives competitive advantage over
competitors and is not generally
known in the industry

26. 9. Keep it a Secret!
• MUST KEEP SECRET
• Do not disclose unless under proper
agreement (i.e. NDA) – No Exceptions!
• “Achilles heel”
– independent creation
– reverse engineering without espionage
– “genie gets out of the bottle” (even by bad acts)

27. 9. Keep it a Secret!
• 2 Common NDAs for Businesses
– 1. Disclosing confidential information to 3rd
parties
• Prevent unauthorized disclosure or use
– 2. Proprietary rights agreements for employees
• Prevent unauthorized disclosure or use
• Certify that no documents, e-files, or other
information is used outside company purpose
• May also consider Non-Compete agreements

28. 10. Know the Value of Due Diligence
• Process of investigating the financial
and legal status of a transaction
• When?
–Acquiring or licensing
assets/IP/company
–Buying / sourcing for your business
–Seeking investments/financing

29. 10. Know the Value of Due Diligence
• What is involved:
–Verify all IP is assigned/owned
–Properly drafted license/purchase
agreements
–Identify 3rd Party claims to IP
–Quality of measures to protect IP
–Validity of IP records
–Confirm all registrations

30. 11. Basics of an IP Strategy
• Part of a Business Plan
• Consider:
– What aspects of your business/products give you
a commercial advantage?
– Why do customers use your services and/or buy
your products?
– Is it your brand, your reputation or your
technology?
– Where are you most at risk / where do you need
to protect yourself

31. Questions:
Please Ask and I will Answer
jill.link@ipmvs.com
Jill N. Link
McKee, Voorhees & Sease, PLC
801 Grand Avenue, Suite 3200
Des Moines, Iowa 50309
515-288-3667
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