Venture Fast Track - Critical IP Issues for Startups
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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.
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Venture Fast Track - Critical IP Issues for Startups
- 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
- 2. Nutter McClennen & Fish LLP • nutter.com 2 Types of Intellectual Property • Patents • Trademarks/Trade Dress • Copyrights • Trade Secrets • Employment Agreements & NDAs
- 3. Nutter McClennen & Fish LLP • nutter.com 3 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? Nutter McClennen & Fish LLP • nutter.com 4 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 Nutter McClennen & Fish LLP • nutter.com 5
- 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 Nutter McClennen & Fish LLP • nutter.com 6
- 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 Nutter McClennen & Fish LLP • nutter.com 7
- 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 Nutter McClennen & Fish LLP • nutter.com 8
- 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 Nutter McClennen & Fish LLP • nutter.com 9
- 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 Nutter McClennen & Fish LLP • nutter.com 10
- 11. Nutter McClennen & Fish LLP • nutter.com 11 Please join us for more on April 23, 2015