IP Protection Strategies

IDEA © 2016 Kimberly Sahu

Intellectual Property Protection Strategies

What you need

When you need

What you can do if you can’t afford it…

Kimberly Sahu

VentureLawyer.io

[email protected]

Presented at St. Louis Product Camp 2016

Legal Disclaimer (because I have to): I am an attorney, but I am not your attorney. This presentation is for

educational and informative purposes only and does not create an attorney client relationship.

Let`s start!

What types of Intellectual Property does your business have?

IDEAS

Patents

TrademarksTrade

Secrets

Copyrights

Why you should bother?Because what you don’t know CAN hurt you.

© 2016 Kimberly Sahu

1. IDEA

01

How do you protect

your idea?03

02

IDEA

What do you do with an

Idea?

Contract Law

Keep it Secret

Public Disclosure


Taco Bell Chihuahua

1997 - Joseph Shields and Thomas Rinks’ Psycho Chihuahua

TBWA Chiat/Day

2003 - $42 Million judgement against Taco Bell- based on Breach of Contract

2009 - Taco Bell sues TBWA and looses


Expensive

2. PATENTS

Provisional filing fee: $260.00/$130.00/$65.00 Basic utility filing fee: $280.00/$70.00/$70.00 Surcharge, extra claims, size fees, time extension fees,

maintenance fees Utility search fees: $600.00/$300/$150 Utility examination fees: $720/$360/$180 Utility issues fee: $960/$480/$240 Attorneys’ fees: depends on the firm- thousands

A lot of work

Can take months to file, years to issue


Why Bother?In 2014

2. PATENTS

7,481

4,936

4,048

2,829

3,214

2,566

2,586© 2016 Kimberly Sahu

What do they do with all these patents?-Squash competition

2. PATENTS

How do they do it? Infringement Lawsuits-Microsoft v. Apple-Microsoft v. You-Microsoft v. US Government


First thing you do? SEARCH

2. PATENTS

- Hire an Attorney- Hire an Agency- Do it yourself (then give it to an attorney)


Why you should fear someone else’s patents

2. PATENTS

-Because they can stop you from making/selling/importing/using their invention

- Cease and desist letters- Lawsuit- Court injunctions- Damages- Attorney’s Fees


Caution! Strict Deadlines for filing Patent Applications

2. PATENTS

- 1 year from first disclosure for US applications

- File BEFORE disclosure for foreign applications


But I’m a startup, I can’t afford all this!

2. PATENTS

How much did you spend on development, manufacturing, sales?

Do your own search- and give results to attorney

Write as much as possible for your application- and give to

an attorney

Shop around for an Attorney/Agent© 2016 Kimberly Sahu

2. PATENTS

Should you patent?- How valuable is your invention?

- How reverse engineer-able is it?

- Are you ready to enforce it?

- How quickly is the market evolving?

Other Options- Defensive Publishing

- Trade Secret


3. TRADE SECRETS

What is a trade secret? -Anything you don’t want your competitors to know

-Anything that gives you a competitive advantage

- Secret recipes- Coca-Cola

- Customer lists

- Customer personal information

- Price lists

- Supplier quotes

-etc…


3. TRADE SECRETS

Why would you choose trade secret?

- If you don’t want to disclose the information

- If its hard to reverse engineer

- If the tech becomes obsolete quickly


3. TRADE SECRETS

How to protect a Trade Secret?

-Robust protection policy

-Non-disclosure agreements

-Keep information need to know

-Limit access- keep locked up

-Exit interviews with reminders

- etc...


3. TRADE SECRETS

Legal recourse

- Breach of Contract, Theft, Unjust Enrichment

- But must have worked to actively maintain secret

- But once secret is out, its out


4. TRADEMARKS

- Identify a Product/Service’s origin

- Aka Brand

- For the benefit of the consumer

- Context dependent


4. TRADEMARKS

- Before doing anything else

- Don’t want to accidently/purposefully infringe

- Coming to America- McDowell’s

- IDrone

First : Search


4. TRADEMARKS

- Cease and Desist Letter

- Lawsuits

- Injunctions

- Damages

- Legal fees

- Starting all over

Infringement Consequences


4. TRADEMARKS

-Stop freeloaders

-Stop copiers

-Protect reputation

-Prevent unnecessary litigation

Why should you care/ spend the money?


4. TRADEMARKS

- Available

- Distinctive

Requirements


4. TRADEMARKS

- Cant be confusingly similar to a name already in use- Depends on

- type of goods- brands being used- where they are being used in commerce- business expansion plans - selling context- advertising form- etc…

Availability


4. TRADEMARKS

Generic- no apples, e-store

Descriptive- maybe eventually Awesome Computers, American Airlines

Arbitrary- yeah most likely Apple, Amazon

Fanciful- definitely Microsoft, Exxon

Distinctiveness


4. TRADEMARKS

3 Levels of Potential Protection

Common Law rights

-Automatically attach upon a mark’s use in commerce

-Limited geographically

-Free

State Registration

-Protection limited to that state

-Cheaper/ faster than Federal Registration

Federal Registration-More expensive- $225-$275 filing fee-Attorneys fees- starts at about $500-Takes about 8 months – 2 years-Get to use R in a circle-Nationwide protection-Valuable legal presumptions-Register with US customs

4. TRADEMARKS

- Tie up the name

- Put ™ all over it

- Advertise the crap out of it

So what can you do if you can’t get federal protection?


5. COPYRIGHT

Protects the expression of an idea, not the idea itself

Art, pictures, designs, software code, music, recordings,

choreographies, plays, books, websites, etc…

Right to prevent other from reproducing, adapting,

distributing, performing, and displaying

What it is? What does it do?


5. COPYRIGHT

-Common Law- Attaches automatically at the moment of creation- Actual damages- Burden of proof – ownership and copying

- Put © , your name, and the year on it- Federal Registration

- Taking your rights to the next level- As long as its before suit- Statutory damages and attorney’s fees- Legal presumptions

What rights do you get and when do you get it?


5. COPYRIGHT

-Don’t cut and paste- Ever!

-Don’t tell someone to cut and paste

-Beware- by admitting to changing something enough to avoid infringement you are actually admitting to infringement!

-Work for Hire- must be in writing

-Fair Use Exceptions- based in the 1st Amendment: Freedom of Speech

Infringement


5. COPYRIGHT

-Actual damages- lost profits

-Statutory/ Automatic damages- per incident- music downloads

-Injunctions

-Seize and destroy orders

-Litigation expenses

-Attorney’s fees and court costs

Risking it all


www.yourwebsite.com

ContactInfo

Kimberly Sahu

www.VentureLawyer.io

[email protected]

If I spent too long talking feel free to see me after the presentation or

send me an email.

Questions?


IP Protection Strategies

Law

Transcript of IP Protection Strategies