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Bruce S. Itchkawitz, Ph.D. and
Rabi N. Narula
as part of the
National Venture Plan Competition
October 8, 2020
Key IP
Agreements
for Startups
Presented by:
© 2020 All rights reserved. 2
Intellectual property (IP) is a key source of value for startups
• Various agreements to discuss:
• Nondisclosure (NDA) / Confidential Disclosure Agreement (CDA)
• Employment Agreement
• Invention Assignment Agreement
• Consulting Agreement
• Development Agreement
• License Agreement
Introduction
• IP: Patents, trademarks, copyrights, trade secrets
• Valuable exclusivity that distinguishes the startup from its
competitors
• Attract funding from potential investors
• Make the company a more attractive acquisition target
© 2020 All rights reserved. 3
Two key concepts common to all these agreements
• Ownership:
• Exclusivity from being practiced only by the startup
• Want to ensure that you own what you think you own
• Avoid “leakage”: e.g., via joint ownership
• Joint owners each have right to practice and to non-
exclusively license the IP to others (w/o sharing
proceeds)
• But for standing to sue for infringement, need to have all
joint owners join the litigation
Introduction(cont.)
• Confidentiality:
• Exclusivity from being known only to the startup
• Want to ensure that others cannot “free-ride” on your
investment in developing confidential information
© 2020 All rights reserved. 4
What we hope to cover:
• How these concepts are addressed in these key agreements
What we hope you’ll get out of it:
• Not trying to turn you into patent attorneys or give legal advice
• Want to help you to better communicate/work with your IP
attorney in drafting these agreements to protect your IP
Goals for today
© 2020 All rights reserved. 5
• Startup may be eager to disclose its IP
• Raising funding: some disclosure as part of the pitch
• But VCs often will not sign an NDA
• Collaborative projects with consultants / 3rd parties
• But today’s collaborator can be tomorrow’s competitor
NDA / CDA
• Don’t lose sight of goal of protecting your IP
• Don’t use incomplete templates or boilerplate NDAs that
do not properly address the situation at hand
• Common-sense measures (not relying solely on NDA)
• Limit disclosure to only what is needed to achieve the goal
• For technical information: get patent application on file
prior to disclosure (helpful even if NDA also used).
© 2020 All rights reserved. 6
• To increase enforceability: NDA should be explicit
• Purpose
• Why is Disclosing Party (DP) disclosing to Receiving Party (RP)
• Confidential Information (CI)
• What information does DP consider confidential/proprietary
• Obligations on confidentiality and use
• What RP can and cannot do with the CI
• Permitted recipients
• With whom can RP share the CI
• Ownership
• Who owns what
NDA / CDA(cont.)
• Other provisions to include:
• RP to notify DP when any newly-developed IP is created
• Ownership/licensing of any newly-developed IP created by RP
• RP to notify DP of decision to develop their own product
© 2020 All rights reserved. 7
• Startup should be judicious about signing NDAs and
receiving CI from 3rd parties
NDA / CDA(cont.)
• Example: Oculus v. ZeniMax
• O entered NDA with ZM to collaborate on VR headset
software
• CTO hired by O from ZM; he took CI from ZM and used at O
• ZM sued O (now Facebook) and executives
• TS misappropriation, CR infringement, TM infringement, unfair
competition, breach of contract (the NDA)
• Feb. 2017: Texas Fed. Ct. ruled for ZM for $500M
• Included $200M for breach of NDA by using ZM’s CI outside the
bounds of the NDA
• Dec. 2018: Parties settled for undisclosed amount
© 2020 All rights reserved. 8
• Ownership
• Use present grant language (Promise to grant is not a grant)
• “Employee hereby assigns to Employer …”
• Include IP created that relate to company’s business / R+D or
using company’s property or CI
• Calif. §2870:
• Any provision in an employment agreement which provides that an employee
shall assign, or offer to assign, any of his or her rights in an invention to his or
her employer shall not apply and is unenforceable to an invention that the
employee developed entirely on his or her own time without using the
employer’s equipment, supplies, facilities, or trade secret information except
for those inventions that either:
• (1) Relate at the time of conception or reduction to practice of the
invention to the employer’s business, or actual or demonstrably
anticipated research or development of the employer; or
• (2) Result from any work performed by the employee for the employer.
• Have employee list any prior invention
• Have employee confirm that employee is not under any other
ownership obligations
Employment Agreement
© 2020 All rights reserved. 9
• Confidentiality
• Prohibit unauthorized disclosure and use of CI
• Prevent being tainted by IP of others
• Prohibit use of CI of 3rd party (e.g., prior employer)
• Have employee acknowledge the prohibition and affirm that they will
comply
• Exit interview
• Remind departing employee of obligations re: ownership and
confidentiality
Employment Agreement (cont.)
© 2020 All rights reserved. 10
• In U.S., inventions/applications/patents are owned by
inventors
• Company must get written transfer of ownership (assignment)
from inventors (35 USC 261)
• Assignment Agreement should:
• Define invention/application properly and specifically
• Use present grant language (Promise to grant is not a grant)
• “Assignor hereby assigns to Assignee …”
• Not “Assignor agrees to assign to Assignee …”
• Include future related applications/patents
• E.g., continuations, divisionals, …
• Include right to sue for past damages
Inventor Assignment Agreement
© 2020 All rights reserved. 11
• Similar ownership and confidentiality provisions to EA
• But even moreso
• “Work for hire”
• For patents, no such thing
• Inventor is presumed to own the invention, even if funded by company
• Must get written assignment
• For copyrights, “work for hire” is an exception to “author is
original copyright owner”; Must be either (17 USC 101):
• (a) Work prepared by an employee within the scope of their employment
• Title is unimportant; focus is on company’s degree of control over the work,
over the employee, and status / conduct of company
• (b) Work specially ordered/commissioned for use as one of enumerated
set (e.g., part of collective work, film, translation, atlas) as long as parties
expressly agreed in writing that work is a “work for hire”
• Software can fall within 17 USC 101(a) but isn’t in set listed in 17 USC 101(b)
• Get assignment in writing
Consulting Agreement
© 2020 All rights reserved. 12
• More complicated
• Both parties bringing pre-existing IP, and/or
• Newly-created IP by one or both parties
• Want to clearly define each of the “buckets”
a) Pre-existing IP of party A or party B
b) Newly-developed IP by party A or party B (as part of Dev. Ag.)
c) Newly-developed IP by both parties A and B
• Newly-developed IP
• Lay out who owns (avoiding joint ownership)
• E.g., based on inventorship or subject matter
• License to other party; right of first refusal to exclusive license
• Include notice provision (e.g., if filing a patent application)
Development Agreement
© 2020 All rights reserved. 13
• Key provisions
• Grant: what rights are / are not being granted
• Exclusive vs. non-exclusive
• Exclusive: promise that Licensor will not also license to a 3rd party
• Non-exclusive: promise that Licensor will not sue Licensee
• Limitations based on geography; field of use
• Can’t use these limitations to divide patent ownership, but can use in license
• Payments: what does Licensor receive
• How calculated; milestones
• Transferability / sub-licenses
• IP management
• Newly-developed IP: who owns; who controls prosecution; who pays MFs
• Representations and Warranties
• Given by Licensor: affirms Licensor has ownership, right to grant license,
validity of patents (to Licensor’s knowledge), no infringement (to
Licensor’s knowledge)
• Given by Licensee: Disclaimer of implied warranties
Patent License Agreement
© 2020 All rights reserved. 1414
Bruce S. Itchkawitz, Ph.D.
• Strategic Patent Portfolios with Continuing
Value
https://www.linkedin.com/pulse/strategic-
patent-portfolios-continuing-value-bruce-
itchkawitz/
• 3 Approaches to Get Your Patent Application
Moving Much Faster
https://www.entrepreneur.com/article/290429
• 7 IP Issues Startup Entrepreneurs Should Not
Overlook
https://www.knobbe.com/news/2015/09/7-
intellectual-property-issues-startup-
entrepreneurs-should-not-overlook-jd-supra
Bruce.Itchkawitz@knobbe.com
J.D., University of Virginia
Ph.D. Physics, University of Pennsylvania
B.S. Engineering Physics, Lehigh University
Contact information
Rabi N. Narula
Rabi.Narula@knobbe.com
J.D., UCLA
M.S. Mechanical Engineering, Stanford University
B.S. Mechanical Engineering, University of
California, Irvine.

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Nvpc presentation key ip agreements for startups

  • 1. Bruce S. Itchkawitz, Ph.D. and Rabi N. Narula as part of the National Venture Plan Competition October 8, 2020 Key IP Agreements for Startups Presented by:
  • 2. © 2020 All rights reserved. 2 Intellectual property (IP) is a key source of value for startups • Various agreements to discuss: • Nondisclosure (NDA) / Confidential Disclosure Agreement (CDA) • Employment Agreement • Invention Assignment Agreement • Consulting Agreement • Development Agreement • License Agreement Introduction • IP: Patents, trademarks, copyrights, trade secrets • Valuable exclusivity that distinguishes the startup from its competitors • Attract funding from potential investors • Make the company a more attractive acquisition target
  • 3. © 2020 All rights reserved. 3 Two key concepts common to all these agreements • Ownership: • Exclusivity from being practiced only by the startup • Want to ensure that you own what you think you own • Avoid “leakage”: e.g., via joint ownership • Joint owners each have right to practice and to non- exclusively license the IP to others (w/o sharing proceeds) • But for standing to sue for infringement, need to have all joint owners join the litigation Introduction(cont.) • Confidentiality: • Exclusivity from being known only to the startup • Want to ensure that others cannot “free-ride” on your investment in developing confidential information
  • 4. © 2020 All rights reserved. 4 What we hope to cover: • How these concepts are addressed in these key agreements What we hope you’ll get out of it: • Not trying to turn you into patent attorneys or give legal advice • Want to help you to better communicate/work with your IP attorney in drafting these agreements to protect your IP Goals for today
  • 5. © 2020 All rights reserved. 5 • Startup may be eager to disclose its IP • Raising funding: some disclosure as part of the pitch • But VCs often will not sign an NDA • Collaborative projects with consultants / 3rd parties • But today’s collaborator can be tomorrow’s competitor NDA / CDA • Don’t lose sight of goal of protecting your IP • Don’t use incomplete templates or boilerplate NDAs that do not properly address the situation at hand • Common-sense measures (not relying solely on NDA) • Limit disclosure to only what is needed to achieve the goal • For technical information: get patent application on file prior to disclosure (helpful even if NDA also used).
  • 6. © 2020 All rights reserved. 6 • To increase enforceability: NDA should be explicit • Purpose • Why is Disclosing Party (DP) disclosing to Receiving Party (RP) • Confidential Information (CI) • What information does DP consider confidential/proprietary • Obligations on confidentiality and use • What RP can and cannot do with the CI • Permitted recipients • With whom can RP share the CI • Ownership • Who owns what NDA / CDA(cont.) • Other provisions to include: • RP to notify DP when any newly-developed IP is created • Ownership/licensing of any newly-developed IP created by RP • RP to notify DP of decision to develop their own product
  • 7. © 2020 All rights reserved. 7 • Startup should be judicious about signing NDAs and receiving CI from 3rd parties NDA / CDA(cont.) • Example: Oculus v. ZeniMax • O entered NDA with ZM to collaborate on VR headset software • CTO hired by O from ZM; he took CI from ZM and used at O • ZM sued O (now Facebook) and executives • TS misappropriation, CR infringement, TM infringement, unfair competition, breach of contract (the NDA) • Feb. 2017: Texas Fed. Ct. ruled for ZM for $500M • Included $200M for breach of NDA by using ZM’s CI outside the bounds of the NDA • Dec. 2018: Parties settled for undisclosed amount
  • 8. © 2020 All rights reserved. 8 • Ownership • Use present grant language (Promise to grant is not a grant) • “Employee hereby assigns to Employer …” • Include IP created that relate to company’s business / R+D or using company’s property or CI • Calif. §2870: • Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of his or her rights in an invention to his or her employer shall not apply and is unenforceable to an invention that the employee developed entirely on his or her own time without using the employer’s equipment, supplies, facilities, or trade secret information except for those inventions that either: • (1) Relate at the time of conception or reduction to practice of the invention to the employer’s business, or actual or demonstrably anticipated research or development of the employer; or • (2) Result from any work performed by the employee for the employer. • Have employee list any prior invention • Have employee confirm that employee is not under any other ownership obligations Employment Agreement
  • 9. © 2020 All rights reserved. 9 • Confidentiality • Prohibit unauthorized disclosure and use of CI • Prevent being tainted by IP of others • Prohibit use of CI of 3rd party (e.g., prior employer) • Have employee acknowledge the prohibition and affirm that they will comply • Exit interview • Remind departing employee of obligations re: ownership and confidentiality Employment Agreement (cont.)
  • 10. © 2020 All rights reserved. 10 • In U.S., inventions/applications/patents are owned by inventors • Company must get written transfer of ownership (assignment) from inventors (35 USC 261) • Assignment Agreement should: • Define invention/application properly and specifically • Use present grant language (Promise to grant is not a grant) • “Assignor hereby assigns to Assignee …” • Not “Assignor agrees to assign to Assignee …” • Include future related applications/patents • E.g., continuations, divisionals, … • Include right to sue for past damages Inventor Assignment Agreement
  • 11. © 2020 All rights reserved. 11 • Similar ownership and confidentiality provisions to EA • But even moreso • “Work for hire” • For patents, no such thing • Inventor is presumed to own the invention, even if funded by company • Must get written assignment • For copyrights, “work for hire” is an exception to “author is original copyright owner”; Must be either (17 USC 101): • (a) Work prepared by an employee within the scope of their employment • Title is unimportant; focus is on company’s degree of control over the work, over the employee, and status / conduct of company • (b) Work specially ordered/commissioned for use as one of enumerated set (e.g., part of collective work, film, translation, atlas) as long as parties expressly agreed in writing that work is a “work for hire” • Software can fall within 17 USC 101(a) but isn’t in set listed in 17 USC 101(b) • Get assignment in writing Consulting Agreement
  • 12. © 2020 All rights reserved. 12 • More complicated • Both parties bringing pre-existing IP, and/or • Newly-created IP by one or both parties • Want to clearly define each of the “buckets” a) Pre-existing IP of party A or party B b) Newly-developed IP by party A or party B (as part of Dev. Ag.) c) Newly-developed IP by both parties A and B • Newly-developed IP • Lay out who owns (avoiding joint ownership) • E.g., based on inventorship or subject matter • License to other party; right of first refusal to exclusive license • Include notice provision (e.g., if filing a patent application) Development Agreement
  • 13. © 2020 All rights reserved. 13 • Key provisions • Grant: what rights are / are not being granted • Exclusive vs. non-exclusive • Exclusive: promise that Licensor will not also license to a 3rd party • Non-exclusive: promise that Licensor will not sue Licensee • Limitations based on geography; field of use • Can’t use these limitations to divide patent ownership, but can use in license • Payments: what does Licensor receive • How calculated; milestones • Transferability / sub-licenses • IP management • Newly-developed IP: who owns; who controls prosecution; who pays MFs • Representations and Warranties • Given by Licensor: affirms Licensor has ownership, right to grant license, validity of patents (to Licensor’s knowledge), no infringement (to Licensor’s knowledge) • Given by Licensee: Disclaimer of implied warranties Patent License Agreement
  • 14. © 2020 All rights reserved. 1414 Bruce S. Itchkawitz, Ph.D. • Strategic Patent Portfolios with Continuing Value https://www.linkedin.com/pulse/strategic- patent-portfolios-continuing-value-bruce- itchkawitz/ • 3 Approaches to Get Your Patent Application Moving Much Faster https://www.entrepreneur.com/article/290429 • 7 IP Issues Startup Entrepreneurs Should Not Overlook https://www.knobbe.com/news/2015/09/7- intellectual-property-issues-startup- entrepreneurs-should-not-overlook-jd-supra Bruce.Itchkawitz@knobbe.com J.D., University of Virginia Ph.D. Physics, University of Pennsylvania B.S. Engineering Physics, Lehigh University Contact information Rabi N. Narula Rabi.Narula@knobbe.com J.D., UCLA M.S. Mechanical Engineering, Stanford University B.S. Mechanical Engineering, University of California, Irvine.