2. Got Intellectual Property?
Why Care…
• IP theft costs US companies $250
billion annually
• 100% of all companies have IP
• 700K new startups annually vs. 20%
protected IP after 1st year
• IP is most valuable asset and not on
your Balance Sheet
• Exclude competition; Attract
investment (incl. crowdfunding);
Leverage & license
• Avoid IP loss, infringement, or
business failure
Disclaimer: This is intended to be general information. Nothing in this presentation constitutes
legal advice. Please consult with an attorney before making any intellectual property protection
decisions.
5. Intellectual Property &
Crowdfunding
• REWARDS BASED:
Kickstarter, Indiegogo, Rocket Hub How it
works online!
• EQUITY BASED:
Not yet legal Online Business Planning
Required
6. Strategies to
1.ID IP 2.Protect IP
✔ WHY
WHO
WHAT
WHEN
WHERE
7. WHO: IP Ownership Challenges
• Multiple Inventors
• Who you are? Employee of another company
• Proper Assignment of IP Rights – personal versus
company
• Assume that Ownership automatically extends outside
the US
9. WHEN: Key Dates to Remember
• Date of Idea/Invention (First to Invent First
INVENTOR to file)
• Date of Use
• Date of Filing
• Date of Conversion
• Renewals
11. Strategies to Protect IP
• Do it Yourself:
– USPTO.gov
– Copyright.gov
• Hire a Professional:
– Attorney, Consultant, Legal Zoom, Rocket Lawyer
• Secrets:
– Notary, IP Vault, Copyright software
12. Case Studies
IP Awareness Assessm ent 2/ 26/ 13 11:42 AM
• Inventor
•
IP category Trademarks
Website IP Strategies & Best Practices
Trademarks
Copyrights
Design Patents
`
Q5. Do you control and manage the proper use of your trademark by other users
you have authorized?
1. Yes.
2. No.
3. Not sure.
•
Trade Secrets
Software
Utility Patents
Using Technology of Others Next
Licensing Technology to Others
International IP Rights
IP Asset Tracking
Before starting the assessment, please note:
•
Save the link for this page as a favorite/bookmark on your browser.
Restaurant
In the “Internet Options” of your browser, deselect/uncheck history on exit. This will allow you
to return and resume your assessment session in case you cannot finish it in one sitting. This will
Important Notice also allow you to access your training materials and assessment results at your convenience.
Please note that any information provided As you are answering the assessment questions, choose the answer that best applies to your
here does not constitute legal advice, but is
business or circumstances as an independent invento r or individual. Where applicable, cho ose all
intended to increase your IP awareness.
When filing an application for obtaining the responses that apply to your situation.
specific IP rights, it is recommended that you Responses or data collected in the assessment are not stored or used by the USPTO or NIST MEP.
obtain professional legal assistance. The IP
Awareness Assessment contains links to
•
external websites. USPTO does not maintain
Traklight!
those external sites and is not responsible for
the material found therein.
Accessibility Federal Activities Inventory Department of Commerce Strategy Targeting Organized
Privacy Policy Reform (FAIR) Act NoFEAR Act Report Piracy (STOP!)
Terms of Use Notification and Federal Regulations.gov Careers
Security Employee Antidiscrimination STOP!Fakes.gov Site Index
and Retaliation (NoFEAR) Act Department of Commerce Contact Us
Emergencies/Security Alerts
Budget & Performance USA.gov USPTO Webmaster
Information Quality Guidelines
Freedom of Information Act
This page is owned by Inventor Resources. Last Modified: February 26, 2013
http:/ / www.uspto.gov/ inventors/ assessm ent/ assessm ent.htm l Page 1 of 2
13. Be Prepared - Resources
• CfPA, CfIRA
• Crowdfundingroadmap.com
Annual Oct 14th – 16th
Convention & Bootcamp
• Crowdfundcast.com – podcast
• Getting Started with
Crowdfunding Investing for
Dummies in a Day
• Crowfunding Hatchery
• Traklight.com/IP Cloud – free
resources
14. Strategies to
1.ID IP 2.Protect IP
• Incubators & Accelerators
• Mentors
• SBDC
• SCORE
• Startup Arizona, America
• Competitions – ACA
Innovation Challenge
• Resources – TrakLight.com
- IP Cloud
15. Thank You
IDENTIFY. PROTECT. SUCCEED.
www.traklight.com
Mary Juetten
mejuetten@traklight.com
@traklight
Hinweis der Redaktion
Kaufman study – not a lot of primary research on IPIP Loss – customer list stolen, create a brand and materials but infringing, and computer code not belonging to youIt is not just legal, it is good business. Not just IP attorneys but business attorneys. TI makes more from licensing than products, 40% of US companies’ value does not appear on BS (50% in the EU)
Car – represents Patents – think how many different patents are in a car.Coke – design of the bottleWebsite copyrightTrademark – Coke – protect from Brand confusion – l bought the wrong cookies! Looked it up Fig Newtons 1914ish and Newmans 1997 – hmmmmmm.Coke is $100 billion dollar brand and only $40 billion on the balance sheet…
Example of startup – to show that actually patents least amount of the time - NAME, BRAND, BLOG, Customer or Supplier List, and then Invention or Product – has 100% IP. Patents are more rare for startups! Trade secrets – cheapest but can be easiest to lose.If you patented the wheel (which I found out recently is not the actual tire) if you did not have the right to make a tie rod Example of focus on IP patents, miss the boat on the others, some simple things like protecting Trade Secrets with employees.1 – Simply does not. Only protected in the US. And also actions within the US can impact outside - example patents – until March 2013 changes, once you file in US, you have disclosed your invention and kills ability for international patents. Also, if you publicly disclose your invention with enough detail, you have also killed your ability for international patents 2 – simple ex. copyright – when many parties are doing a project – like these slides to more complex & problematic – patents – if more than one person listed on a patent as owner – regardless of contribution – EACH owner has the right to independently exploit the patent WITHOUT consulting the other.Example of a person who goes to a university and gets one idea from a professor and puts into patent – are they required to list that person as an inventor? 3 – who is actual owner of the IP – if individual inventor or person who filed, need to have a formal written assignment to the Company to assign all the rights otherwise…. 4 – May have a patented process but if an exclusive license to use or sell has been executed, then important to disclose and to understand how/if that impacts your ability to attract investors. 5. For example if you have a contractor developing software for you and they in turn use some freeware and you are charging for the software. You pay the invoice for the contractor and you think that you own this new software. Issues – copyright infringement because free ware used and then resold; if you have not expressly outlined who owns the IP in the software in your contract, you may have not retained the rights to the software. Contractors are not same as employees.
Approach is methodical, like a checklist
Multiple inventors have the right
First INVENTOR to FILE and can Disclose and File.
Knowledge is PowerGet informed and you will save time and money.ABSOLUTELY get attorneys or consultants.
Ask Audience what IP for each Case.Maria’s restaurant example - Have the name, working on the signage and everything, do not use yet but want to save money and wait to file until in use (means offered for sale) BUT someone else files – they win – explain Common Law TM but you do not have because not offered (explain Breanna’s pool concept – know your rights). Trade secrets need to be protected – process or recipes – have employees sign off and mention trade secrets specifically – also trade secret is different every state but need to take reasonable steps to protect something of value.Inventor – Phillip with Smart Focus, the need to document in proper inventors’ notebook and file patents but WAIT you infringed on a TM, any funding presentation, competition (crowdfunding will end up with a huge issue because Enabling Public Disclosure – all 3 are needed. Make sure all inventors’ listed – remember that if listed do NOT have to consult with you. Example from PGCC where the first guy said he did not have IP protection and was there seeking help and the second guy left an important piece at home.Website – copyright every 3 months for blog, careful re copyright taking others’ photos – just because no C does not mean that not still copyright issue. Also if you have videos done, make sure you have the copyright.Software created by outsiders – if they violate copyright and put into your code, can be a problem if not shown (open source read the T&Cs regardless). Need to have all IP assigned. Have business attorney check documents.DO NOT FORGET ABOUT managing IP – need to look for dates, renewals, maintenance fees etc.