IP Law for Startups and Emerging Companies
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Transcript of IP Law for Startups and Emerging Companies
IP LAW FOR STARTUPS AND EMERGING
COMPANIESWeWork Charging Bull May 14, 2014www.boagip.com
© 2014 BOAG | LAW, PLLC
Rights given to persons over the creations of their minds. -WIPO
Intellectual Property
© 2014 BOAG | LAW, PLLC
Intellectual Property
A bundle of rights granted for a new, creative or distinctive idea or expression.
© 2014 BOAG | LAW, PLLC
Policy Justification
Net Social Welfare Theory
Natural Right Theory
Determination that some social good comes from awarding exclusive rights to inventors and authors.
© 2014 BOAG | LAW, PLLC
THE BIG THREE
© 2014 BOAG | LAW, PLLC
The Big Three: Patent
The right to exclude others from making, using, selling, or importing the invention described in the patent’s claims.
Not a right to practice.
© 2014 BOAG | LAW, PLLC
The Big Three: Trademark
A symbol that identifies and distinguishes the source of the goods of one party from those of others.
© 2014 BOAG | LAW, PLLC
The Big Three: Copyright
The exclusive right of an author to exploit a work, including making copies, publicly performing the work, and preparing derivative works.
© 2014 BOAG | LAW, PLLC
Comparison
Patent Trademark Copyright
Term
20 years from
(effective) filing
Indefinite (Use)
Life of the author +
70*
Rights Vest Issuance Use in
commerce Fixation
CostHigh
$5,000-20,000+
Low<$1,000
Very Low<$300
© 2014 BOAG | LAW, PLLC
The Theory of EverythingPatent Trademark Copyright
CriteriaUtility, novelty, non-
obviousness
Distinctive, capable of being an
indicator of source, no LOC
Originality and fixation
Coverage
Inventions or discoveries of any new
process, machine, manufacture, or
composition of matter
Symbols used in commerce that
indicate a source of origin
Original works of authorship
Exclusions
Laws of nature, physical phenomena,
abstract ideas
Scandalous or disparaging subject matter; functional
marks
Ideas, functional aspects, gov’t works
Infringement
Making, using, selling, offering for sale, or importing anything covered by a claim
Likelihood of confusion
Copying and substantial similarity
© 2014 BOAG | LAW, PLLC
Playing The Patent Game
302,948 patents issues in 2013
40,000 “software patents” 4,701 patent infringement
suits filed in 2012 62% brought by NPEs $29B in direct costs
RPX Corporation
© 2014 BOAG | LAW, PLLC
Patents and Startups—Considerations
pique investor interest tangibilization protects early market share
(fear) BUT: expensive and may
not be worth it
© 2014 BOAG | LAW, PLLC
Trademarks and Startups—Considerations
branding: protects business identity
national rights puts others on notice BUT: requires care and
feeding
© 2014 BOAG | LAW, PLLC
STRATEGY
© 2014 BOAG | LAW, PLLC
Strategy I: Patents Identify patent-worthy inventions
Core to business? Alternatives available?
Aim for not just any patent, but a valuable one
Too specific, not valuable Too broad, invalid
© 2014 BOAG | LAW, PLLC
Strategy II: Patents
File early Statutory deadlines First to file
File continuations and adapt
© 2014 BOAG | LAW, PLLC
Strategy III: Trademarks
Confirm availability early Be distinctive Take care of it:
Use it correctly (adjective) Protect it ™ and ®
© 2014 BOAG | LAW, PLLC
Strategy IV: Copyrights
Register important materials
source code, web site Statutory damages Registration required for
infringement claim
© 2014 BOAG | LAW, PLLC
Strategy V: Design Patents
Ornamental Inexpensive and fast E.g., shoe design,
smartphone, GUI, icon Infringer’s profits
© 2014 BOAG | LAW, PLLC
TRAPS
© 2014 BOAG | LAW, PLLC
Trap 1: Premature Disclosure
Must file within one year of your first public disclosure!
Many foreign jurisdictions require “absolute novelty.”
© 2014 BOAG | LAW, PLLC
Trap 2: Casual Inventorship
By default, an employee owns work done within the scope of employment!
Use employment agreements.
© 2014 BOAG | LAW, PLLC
Trap 3: Freedom to Operate
Avoid infringement of the rights of others.Confirm FTO before getting started.
© 2014 BOAG | LAW, PLLC
Trap 4: Bad Trademark Use
Use your trademarks properly and consistently.
Non-use or generic use can be deadly.
© 2014 BOAG | LAW, PLLC
Trap 5: © Fair Use Isn’t Always “Fair”
Limited use for commentary, criticism, parody
Look at purpose, nature, amount, impact
© 2014 BOAG | LAW, PLLC
Questions?