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


Intellectual Property

A bundle of rights granted for a new, creative or distinctive idea or expression.


Policy Justification

Net Social Welfare Theory

Natural Right Theory

Determination that some social good comes from awarding exclusive rights to inventors and authors.


THE BIG THREE


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.


The Big Three: Trademark

A symbol that identifies and distinguishes the source of the goods of one party from those of others.


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.


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


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


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


Patents and Startups—Considerations

pique investor interest tangibilization protects early market share

(fear) BUT: expensive and may

not be worth it


Trademarks and Startups—Considerations

branding: protects business identity

national rights puts others on notice BUT: requires care and

feeding


STRATEGY


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


Strategy II: Patents

File early Statutory deadlines First to file

File continuations and adapt


Strategy III: Trademarks

Confirm availability early Be distinctive Take care of it:

Use it correctly (adjective) Protect it ™ and ®


Strategy IV: Copyrights

Register important materials

source code, web site Statutory damages Registration required for

infringement claim


Strategy V: Design Patents

Ornamental Inexpensive and fast E.g., shoe design,

smartphone, GUI, icon Infringer’s profits


TRAPS


Trap 1: Premature Disclosure

Must file within one year of your first public disclosure!

Many foreign jurisdictions require “absolute novelty.”


Trap 2: Casual Inventorship

By default, an employee owns work done within the scope of employment!

Use employment agreements.


Trap 3: Freedom to Operate

Avoid infringement of the rights of others.Confirm FTO before getting started.


Trap 4: Bad Trademark Use

Use your trademarks properly and consistently.

Non-use or generic use can be deadly.


Trap 5: © Fair Use Isn’t Always “Fair”

Limited use for commentary, criticism, parody

Look at purpose, nature, amount, impact


Questions?

Business

IP Law for Startups and Emerging Companies