Intellectual property (IP) is the lifeblood of every knowledge-based start-up or venture. In this lecture, learn how to manage your intellectual property in a strategic way and examine how it fits in with your overall business model. A large part of your competitive advantage depends on your ability to protect and properly exploit or commercialize your product or service innovations. IP law provides the framework for protecting and commercializing these innovations. We use some real-world examples, particularly in the IT/Web 2.0 space, where IP issues arise and discuss how to address them effectively.

2. INTELLECTUAL PROPERTY (IP)
FOR TECH START-UPS
MARS DISCOVERY DISTRICT
ENTREPRENEURSHIP 101
WEDNESDAY JANUARY 26, 2011
ARSHIA TABRIZI
B.A.SC. COMPUTER ENGINEERING (HON) (UOFT)
JURIS DOCTOR (LAW) (UOFT)
MEMBER OF ONTARIO & CALIFORNIA BARS
WWW.TABRIZILAW.COM
ARSHIA@TABRIZILAW.COM

3. Tabrizi Law Office PC
 Start-up/technology law for over 12 years
 Full-service start-up practice since 2002
 Incorporation, Financing, IP, Trademark, Licensing, Web
 Strategic Advisors/Partners with Clients
 Client list
 NeXJ Systems (founded by William Tatham, previously
founder of Janna Systems, acquired by Siebel for $1.7 b.)
 RedFlagDeals.com (acquired by YPG in March 2010)
 WedSnap Inc. (acquired by The Knot Inc. in Feb 2009)
 CognoVision (MaRS client, recently acquired by Intel)
 6N Silicon Inc. (MaRS client, acquired by Calisolar Inc.)
Copyright 2008-2011 Tabrizi Law Office PC

4. Business of Innovation
 What is a start-up?
 Business of innovation
 What makes a start-up?
 Intangible assets
 Invention
 Brand
 Software
 Know-how
Copyright 2008-2011 Tabrizi Law Office PC

5. What is IP?
 IP protects “intangible assets”
 IP gives “competitive advantage”
 Keeps competitors outside market
 IP is “intellectual” property
 Your “intangible” piece of real estate
 IP is a “business tool”
 Service of “business objectives”
 IP is “not” just about patents
Copyright 2008-2011 Tabrizi Law Office PC

6. IP #1 – Trade Secrets
 What is a Trade Secret?
 Information of value
 Protected via secrecy
 Types of information
 Source code
 Algorithm
 Chemical process
 Business plan
 Customer list
 Pricing list
Copyright 2008-2011 Tabrizi Law Office PC

7. Trade Secrets – Tip #1
 Non-disclosure agreements (NDA)
 Agreement to treat information in confidence
 Disclosure to:
 Potential hire
 Potential customer
 Potential partner
 Potential investor
 Mutual versus one-way NDA
 Read them!
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8. IP #1 – Trade Secrets
8
PROS CONS
 Competitors in the dark  WikiLeaks
 Unlimited protection period  Reverse engineering
 Patent
Copyright 2008-2011 Tabrizi Law Office
PC

9. IP #2 - Patents
 What is a Patent?
 Invention
 New (not “prior art”)
 Not Obvious (e.g. car with 5 wheels)
 Utility (commercial application)
 Why get a Patent?
 20-year monopoly
 Exclusive market
Copyright 2008-2011 Tabrizi Law Office PC

10. IP #2 - Patents
 How do I get a Patent?
 Patent registry search
 Do yourself, hire someone
 Draft and file application
 Description
 Claims (Scope of Invention)
 Previous Publication
 1-year grace period
 Rights on “registration”
 ~ 3-5 years to registration
Copyright 2008-2011 Tabrizi Law Office PC

11. Patents – Tip #2
 Patents are “business tools”
 Offensive strategy
 Litigation
 License-out
 Biotech, IBM, RIM
 Patent trolls
 Other strategy
 Cold war (defensive)
 Start-up
 Venture capital
 Competitors out
Copyright 2008-2011 Tabrizi Law Office PC

12. IP #2 - Patents
12
PROS CONS
 20-year monopoly  Tell the world
 No “good guy” defense  Costs: file ($3-15k),
registration ($25k),
enforcement (?)
 Internal resources
Copyright 2008-2011 Tabrizi Law Office
PC

13. IP #3 - Copyright
 What is Copyright?
 Right to copy
 Other rights (perform, display)
 Automatic on creation
 Content (website, music, text)
 Software (firmware)
 Documentation, drawings, designs
 Exclude competitors
 Prevent copying of your creation
 License your creation
Copyright 2008-2011 Tabrizi Law Office PC

14. Copyright – Tip #3
 Copyright assignment
 Authors own original copyright
 Written assignment required
 Employment contracts
 Consulting contracts
Copyright 2008-2011 Tabrizi Law Office PC

15. IP #3 - Copyright
15
PROS CONS
 Cheap  Does not protect idea
 Automatic  Only against copycats
 Enforcing (P2P)
Copyright 2008-2011 Tabrizi Law Office
PC

16. IP #4 - Trademarks
 What is a Trademark?
 Word
 Company name, product name
 Logo
 Nike, Windows, Apple
 Registration
 $1-2kper mark, 3–18 months
 Market (country) analysis
 Why Get a Trademark?
 Stop copying
 Stop confusing marks
Copyright 2008-2011 Tabrizi Law Office PC

17. Trademarks – Tip #4
 Trademarks must be used
 Registration not enough
 Use it or lose it
 Useit
 Document it
Copyright 2008-2011 Tabrizi Law Office PC

18. Thank You
 Tabrizi Law Office P.C.
 www.tabrizilaw.com
 arshia_tabrizi
 arshia@tabrizilaw.com
 416.510.2600 x.306
Copyright 2008-2011 Tabrizi Law Office PC