IP For Start-Ups Brian D. Gildea, Esq. Executive Director, IP & Licensing

Boston University Slideshow Title Goes Here Topics - IP For Start-Ups  What is Intellectual Property (IP)?  Why Protect IP?  How Do You Protect IP - Basics?  Creating NewCo’s IP Strategy  Practical Advice

Boston University Slideshow Title Goes Here What is Intellectual Property (IP)?  Patents  Trade Secrets  Copyrights  Trademarks

Boston University Slideshow Title Goes Here What is Intellectual Property (IP)?  Patents  Pertain To Inventions  Limited Term – 20 Years  Process is Highly Technical – Use Lawyer  Disclosure  Best Mode, i.e. Full Disclosure  Enable Ordinary Practitioner To Make And Use  Abstract

Boston University Slideshow Title Goes Here What is Intellectual Property (IP)?  Scope of Protection is Defined by Claims  New  Useful  Not Obvious  Clear – Unambiguous

Boston University Slideshow Title Goes Here What is Intellectual Property (IP)?  In US – Patent Law is Exclusively Federal  US Provisional & Non-Provisional Patent  Patent Cooperation Treaty (WIPO)  National Phase (No WIPO Patents)  Patent Rights Are Filed & Enforced Country By Country

Boston University Slideshow Title Goes Here What is Intellectual Property (IP)?  Trade Secrets/Inventions (The Anti- Patent – No Registration Required)  Term of Protection – Possibly Forever  Must Take Reasonable Steps To Protect Your Secret !!!!!!  Risks  Failure To Protect – Public Knowledge  Others Can Invent Same Thing  Possible To Reverse Engineer

Boston University Slideshow Title Goes Here What is Intellectual Property (IP)?  Trademarks, Trade name & Trade Dress  Branding  Protection Against Consumer Confusion  Can Exist Forever  Must Register & Re-Register Periodically  US State Laws (No Registration Required)  US Federal Laws  File Country by Country  WIPO Registration  Madrid Protocol – International Trademark

Boston University Slideshow Title Goes Here What is Intellectual Property (IP)?  Create Your Brand From the Start  Create Your Logo – Letterhead – Fax Covers  Decide on Color Schemes  Decide On Details – Font & Font Size, etc.  Layouts & Background For Presentations & Web  Be Consistent In All Aspects Of Your Public Appearance  When Others See Your Stuff – They Think - NewCo

Boston University Slideshow Title Goes Here What is Intellectual Property (IP)?  Copyrights  Exclusively Federal - US  Software code, manuals, artistic works, customer lists, supplier lists, SOPs.  Comparatively Long Term (70+ years)  Protect By Registration w/ Library of Congress  Registration Required to Enforce Rights in US  Registration Not Required To Claim Copyright  Less Useful To Many High Tech Companies

Boston University Slideshow Title Goes Here What is Intellectual Property (IP)?  Beware Of Others Rights  Engage In Proper Record Keeping – Exit Strategy  Beware Disgruntled/Difficult Employees  Have a Computer/Software Policy  Prohibit Use Of Pirated Software  Use Site Licenses  Include Restrictions In Employment Agreements

Boston University Slideshow Title Goes Here Why Protect IP  Barrier To Competition – Price Erosion  Means To Protect Investment  Asset Of NewCo  Basis For 3 rd Party Investment  Collateral For A Loan

Boston University Slideshow Title Goes Here How Do You Protect IP? - Basics  Employment Agreements  Assigns Inventions, Copyrights, Trade Secrets & Trademarks to NewCo  Obligates Employees To Protect & Maintain NewCo Secrets – e.g. Trade Secrets & Confidential Information  Other Stuff - Like  Return NewCo Property Upon Termination  Do Not Compete With NewCo  Do Not Solicit NewCo Employees

Boston University Slideshow Title Goes Here How Do You Protect IP? - Basics  Confidential Disclosure Agreements  Applies To Disclosure & To Use  Avoids Public Disclosure – Patents/Trade Secrets  Important To Properly Address Term of A Trade Secret in your CDA  Knowledge Is Power  Unless Prevented, Others Will Use Everything You Tell Them Against You

Boston University Slideshow Title Goes Here Creating NewCo’s IP Strategy  Immediate Branding - Trademarks  Evaluate Freedom To Operate  Strategically Create Patent Protection  Use IP Acquisitions  Use Trade Secrets

Boston University Slideshow Title Goes Here Creating NewCo’s IP Strategy  Freedom To Operate  Patent Grant = Negative Right  Right To Exclude – Not a right to practice

Boston University Slideshow Title Goes Here Creating NewCo’s IP Strategy Basic Improvement No. 2 Improvement No.1

Boston University Slideshow Title Goes Here Creating NewCo’s IP Strategy  Simple Tests For FTO  Patent Application ≠ Patent  Current on Maintenance Fees?  More Complex Analysis  Careful Analysis Of Claims - Limitations  Check Prosecution History - Disclaimers  Public Pair – USPTO  EPO – Public File History Site

Boston University Slideshow Title Goes Here Creating NewCo’s IP Strategy  More Search Tools  USPTO Search Tool  WIPO Search Tool  Google  Delphion (Pay Service)  SciFinder (Pay Service)  Your Patent Lawyer

Boston University Slideshow Title Goes Here Creating NewCo’s IP Strategy  Searching For Problems (Why ??)  Information Is Power  You Need Answers !!!!  Outcomes  We Don’t See A Problem  Design Around Another’s IP  Prepare To Fight In Court ($$$$)

Boston University Slideshow Title Goes Here Creating NewCo’s IP Strategy  Patent Portfolio (No Strategy Fits All)  Prosecution of Basic Patent(s)  Early Allowance of Narrow Claims; or  Delayed Allowance of Broad Claims  Create NewCo IP  Around NewCo’s Products  Around Competitor’s Business Interests  Around Technical Areas

Boston University Slideshow Title Goes Here Creating NewCo’s IP Strategy  Use IP Acquisitions  Asset Acquisitions (Be A Patent Troll)  Consider In-Licensing & X-Licensing  Consider Partnering (Horse Trading)  Acquire IP As A Sword

Boston University Slideshow Title Goes Here Creating NewCo’s IP Strategy  The Hard Way ($$$)  Legal Opinion  Some Level Of Comfort  Protection Against Treble Damages  The Opinion  No Infringement (Hope for this result)  Invalid Patent

Boston University Slideshow Title Goes Here Creating NewCo’s IP Strategy  You Don’t Need To Patent Everything !!  Use Trade Secrets For:  Incremental Improvements  ‘Obvious’ Improvements  Critical Process Steps

Boston University Slideshow Title Goes Here Creating NewCo’s IP Strategy  IP Strategy Goals  Build Value – Build Assets  Protect Products – (Monopoly)  Create Income – (Licensing)  Create Options – (Defense)  Find A Clear Path To Products (FTO)

Boston University Slideshow Title Goes Here Practical Advice  Be Careful What You ‘Say’ About IP  Your Company’s IP  Competitor’s (Other’s) IP

Boston University Slideshow Title Goes Here Practical Advice  Your Company’s IP  Use A Telephone And/Or Pen & Paper (Not A Computer) To Discuss Negative Aspects Of NewCo’s IP Portfolio  Destroy Writings When Issue Is Resolved  Destroy Draft Documents !!!  Avoid

Boston University Slideshow Title Goes Here Practical Advice   To: CEO  From: CSO  “Our Provisional Patent Application Is Weak”

Boston University Slideshow Title Goes Here Practical Advice   To: CEO  From: CSO  “OMG, I just found out that our new product infringes US 7,333,666”

Boston University Slideshow Title Goes Here Practical Advice   To: CEO  From: CSO  Cc: Company Attorney  “I think we may need to figure out whether or not our new product infringes US 7,333,666”

Boston University Slideshow Title Goes Here Practical Advice  Your Competitor’s IP  Use A Telephone And/Or Pen & Paper (Not A Computer) To Discuss Negative Aspects Of Competitor’s IP Portfolio  Destroy Writings When Issue Is Resolved Or Be Sure That Document Is Privileged

Boston University Slideshow Title Goes Here Practical Advice   To: CEO  From: CSO  “I performed a search for prior art to X- Corp’s US 7,333,666 and I’m confident claims 1-3 are disclosed in Reference X”

Boston University Slideshow Title Goes Here Practical Advice   To: CEO  From: CSO  Cc: Company Attorney  “I performed a search for prior art to X- Corp’s US 7,333,666 and I’m confident claims 1-3 are disclosed in Reference X”

Boston University Slideshow Title Goes Here IP for Start-Ups  Questions?  I can be reached at: