Chad

1. Intellectual Property Considerations for High Tech Startup Companies
Presented by: Chad Walsh

2. Topics
Mobile Employee Issues
Identifying and Protecting Innovations
Patent Process Primer for Founders and Executives
The content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C.All rights reserved
3. Mobile Employee Issues
Trade Secrets
Nonsolicitation
Noncompetition
4. Trade Secrets
What are Trade Secrets?
Information technical & business
Economic value from not being generally known
Reasonable efforts to maintain secrecy
5. Common Scenarios
Mobile Employees
Founders leave prior employer
Company hires new employees
Founder/Company share information with 3rd parties
6. Labor Code 2870: Employers in California typically own everything you do unless unrelated to current or anticipated research or development.
Must make a clean exit
Dont start work until after you leave.
Take NOTHING!!!!
Show Independent Development Keep records.
Consider a waiver or deal with former Employer.
Example:Pursuing exploration of opportunities in emerging markets.
Understand Nonsoliciation/Noncompete terms of Employment Agreement.
Trade Secrets - Mobile Employees
7. NONDISCLOSURE AGREEMENTS
One-Way Disclosing
One-Way Receiving
Mutual NDA
Every engagement with a 3rd party is a negotiation.
Work with your attorney to understand the parameters for each engagement.
If you are not protected, tell the other side what you can do in broad high level terms without disclosing the magic.Avoid being pumped.
Sharing Information
8. Types of IP Protection
Trademarks Protect the brand equity investments (Company Name, Logo, Product Names).
Copyrights Protect creative works (authorship, graphic design, etc)
Patents Protect technical innovations
Trade Secrets Protect economically valuable non-public information (technical/business)
9. Identifying Innovations
What is it about your product that is different and adds value?
Team:Design, Dev., Mktg, Sales, Apps.
Features that enable value added differentiators should be analyzed for protection.
10. Patents vs. Trade Secrets
Is the innovation capable of being maintained in total secrecy FOREVER!
Facebook NOT!
Advanced threading algorithm executing ONLY on Company Servers and incapable of reverse engineering maybe?
Trade Secrets Once it is public, it is GONE.
11. Patent Basics
Provisional v. Nonprovisional
Specification, Drawings, Claims
Novel & Not Obvious
Technical innovations
Software Yes
Pure Business Methods No
12. Patent Basics (cont.)

Right to Exclude for 20 years from filing date

13. 1 year bar dates in the U.S. 14. Publication - Conferences 15. Public Use Samples, Prototypes 16. Sale or Offer for Sale - Quotes 17. Provisional Patents Abandoned after 1yr. 18. Foreign Filing Non-public/1 yr from filingThe content of this presentation shall not be considered legal advertising, advice, or opinion. Copyright 2011 Fountainhead Law Group P.C.All rights reserved
19. Patent Process Basics
Meeting with Patent Attorney to:
Review product offerings and identify potential innovations
Develop portfolio and business strategy
Deep dive into identified technologies
Drafting and Filing of Patent Applications
Duty of Disclosure
Foreign Filing, Provisional/Nonprov.
20. Patent Process Basics (cont.)
Publication/Non-publication 18 mo.
Examination by USPTO 1-2 yrs.
First Office Action/Response
Further Examination/Responses
Allowance/RCE/Appeal
Continuations, Divisionals, CIPs
Patent Grant
Maintenance fees
21. Misc Patent Issues in High Tech
Product Clearance and Patent Search
Standards, Open Source, and RANDZ terms
Contracts and Development Agreements
Cost/Quality/Scope
Offensive/Defensive Strategies - Litigation
22. Closing Thoughts
Intellectual Property Rights are Assets that add value to your business.
Your Lawyers should be trusted members of your executive team.
Choose carefully and deliberately.
Help me, help you.Jerry McGuire
23. THANK YOU!

Chad

Education

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