Legal Considerations For Commercializing Technology and Intellectual Property Presentation for the Nikola Tesla Memorial Conference January 11, 2014, New York, New York Francis X. Taney, Jr. Taney Legal LLC
Why This Presentation Matters Good ideas don’t necessarily equal commercial potential or marketability Commercial potential or marketability doesn’t necessarily equal profit or wealth creation Exhibit A? The life of Nikola Tesla
Step 1 - Understand What Intellectual Property Is Patents Trade Secrets Copyrights Trademarks
Step 2 – Perfect and Protect Your Ownership of Your IP Registration of Patents, Copyrights and Trademarks Preservation of the Confidentiality of Trade Secrets Agreements on the Ownership and Licensing of IP Created by Others
Step 3 – Form an Entity Through Which to Do Business Key consideration is protection from personal liability Sole proprietorships and common law partnerships do not provide this protection Give thought to and be aware of the tax implications arising from the choice of entity
Step 4 – Attack the Market Typical options are conveyance or licensing of the technology and related intellectual property Clarity is necessary with respect to the documents used to convey or license the technology Delay is typically the enemy of commercialization and wealth creation
Contact Information Francis (“Frank”) X. Taney, Jr. Taney Legal LLC (215)