intellectual property for start-ups and small businesses

Intellectual Property for Start-Ups and Small Businesses:

Top 10 and Q&A Series

Jill N. LinkMcKee, Voorhees & Sease, PLC801 Grand Avenue, Suite 3200

Des Moines, Iowa 50309515-288-3667

jill.link@ipmvs.com

Overview

• Most common intellectual property concerns for start-ups

• under appreciated or unappreciated

• Opportunities for protecting intellectual property assets

• Q&A

Product orInnovation

Utility patent(s)

Design patent(s)

Trademark(s)

Trade dressTrade secret

Copyright

Domain name

Intellectual Property

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COMPARISON OF MAJOR FORMS OF IP

1. Choosing a Business Name

• Trademark protection– New name, rebranding, launching new goods or

services

• Quality of name impacts protection– You impact strength of mark before “goodwill”

and “reputation” are established

1. Choosing a Business Name

• Be distinctive, fanciful or arbitrary!– Fanciful - “coined” words, invented or selected

for sole purpose of trademark– Arbitrary - ordinary meaning of word is arbitrary

and non-descriptive for the good or service– Suggestive – merely suggests character or quality– Descriptive - describes character or quality

(weak protection)– Generic - common, ordinary word for a product

(no protection)

1. Choosing a Business Name

• Trademark rights exist from time the mark is used in connection with goods or services– Common law - geographic markets – State registration – Federal registration - national protection against

subsequent users

• Confirm availability– Online search / screening– Trademark search (rights of others)

Using trademark symbols “TM”, “SM” and “®” • Anyone who claims rights on a mark may use the

"TM" (trademark) or "SM" (service mark) designation to alert the public to the claim. It is not necessary to have a registration or even a pending application to use these

• The registration symbol “®“ may be used ONLY when the mark is registered with the USPTO. It is improper to use this symbol at any point before the registration issues

2. Websites are Assets

• URL may be and/or contain a trademark– Allows you to prevent similar domain names

• Work contained on site is your copyrighted material– Literary, pictorial, graphic, software, etc.– Protection lasts for the author’s life + 70 years

(works created on or after 1/1/78)– Add notice to website• ©2013 McKee, Voorhees & Sease, PLC

2. Websites are Assets

• If you create (or pay for it) – OWN IT!– If another creates on your behalf – require

copyright assignment

• Just because you hire/pay someone to write/create/design for you, it does NOT mean you own the copyright in the work– You ONLY own the physical object you paid for– You CANNOT make copies of it!

2. Websites are Assets

• The copyright in the work immediately becomes the property of the author that created the work

– Exception 1: work for hire – copyright owned by employer instead of the employee

– Exception 2: you agree otherwise in writing (i.e. make it a work for hire)

3. Control your Online Presence • Manage your Domains• Register all Domains that contain Trademarks– Decrease risk of “cybersquatting”

• Monitor other Websites– New gTLD extensions go live in 2013– “.DEALS” “.XXX”, etc.

• Have a “Take Down” Strategy• Monitor 3rd Party Keyword Advertising– eBay, Google ad words, counterfeit products

4. Be “Social”

• Register your usernames ASAP• Understand risks and rewards of social media• Rewards– Trademarks can penetrate market – quicker path to

establishing reputation and goodwill– Accessibility to interstate commerce

• Risks– Failure to monitor “@yourbrand”, false social network

presence, unopposed disparagement of your brand/products

5. Plan for Patent Protection

• Establish IP Guidelines to Identify, Protect, and Maintain IP– Focus on Protecting early on….– Control (or avoid) classic blunders• “Statutory bars” to patent

– E.g. to preserve patent filing rights in the U.S. (we still have a 1 year “grace period”) and internationally (assume “absolute novelty” – some exceptions)

• Consider all publications, offers for sale / sale, public use, advertising, product launch

15

STEPS TO PROTECTING IP

DOCUMENT YOUR IP

THEN DISTILL DOWN --What are free to practice?

--What appears likely can be protected?

THEN DECIDE WHAT TO DO--Keep a Trade Secret?

--File for patent/copyright/trademark protection?--Dedicate to public?

Do nothing?

5. Plan for Patent Protection

• Provisional vs. Regular patent applications vs. Trade secret

• Be aware of U.S. Patent Reform – It’s finally here! –New Rules (Effective March 16, 2013)• First to file at the U.S. Patent Office wins, unless

– another derived the patent from your earlier work (must prove)

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5. Plan for Patent Protection

• But ….. there are other ways to protect IP– Trade secret vs. patent– Design Patents– Copyrights– Trademarks– Contracts• Confidentiality agreements• Material transfer agreements• Corporate research agreements

6. Be on the Defensive

• Patent and Trademark Searches• Freedom to operate (FTO) or Right to use

(RTU) analysis– New goods or services– Ideas from former employees– Your own “knock-off” or “design around”

7. Preserving Funds

• Does the “poor man’s copyright/trademark/patent” work?

• Copyright – Mail a letter to yourself containing work

• Provisional Patent Applications– Pay less now, more later….– A corresponding non-provisional application for patent

must be filed during the 12-month pendency period in order to receive the benefit of the earlier filing date of the provisional application

7. Preserving Funds

• Micro Entity Status = reduced patent fees– Eligible for 75% fee reduction– In addition to “small entity” status (50% reduction)

• Eligibility:– Gross income < 3x median income (e.g. $49,445 in

2010); and– Filed fewer than 4 patent applications

or

– Assigning invention to higher education institution

8. Understand Fair Use

• Assume copyright protection – for (almost) everything• Avoid unauthorized …– File sharing– Downloading– Cut/paste– Reposting– Commercial use of ANYTHING you did not create (or pay

for with assignment of rights)– Adapting without permission– Beyond scope of a license

8. Understand Fair Use

• What is protected under fair use?– Commentary– Criticism– Parody (but be ready for a challenge)– Education and research = non-commercial– News Reporting– Quotation or excepts of another’s work

8. Understand Fair Use• Common Myths– if it’s on the internet it is in the public domain and

therefore free• This includes content on social media – Facebook, Twitter,

Instagram

– if there is no copyright notice, I can use the image– if I alter the image I don’t need permission– if I don’t profit from it, I can use it– if I only use a part of the image I don’t need

permission

8. Understand Fair Use

• Why Should I Care?– substantial monetary damages can be

awarded (actual damages; profits)– statutory damages ($750-$30,000 and up to

$150,000 if the infringement was willful)– the infringing use can be enjoined– attorney’s fees

9. Keep it a Secret!

• Trade Secrets—protection of ideas plus….

• Information which, if known to a competitor, could provide an unfair competitive advantage

» Gives competitive advantage over

competitors and is not generally known in the industry

9. Keep it a Secret!

• MUST KEEP SECRET

• Do not disclose unless under proper agreement (i.e. NDA) – No Exceptions!

• “Achilles heel”– independent creation – reverse engineering without espionage– “genie gets out of the bottle” (even by bad acts)

9. Keep it a Secret!

• 2 Common NDAs for Businesses– 1. Disclosing confidential information to 3rd

parties• Prevent unauthorized disclosure or use

– 2. Proprietary rights agreements for employees• Prevent unauthorized disclosure or use• Certify that no documents, e-files, or other

information is used outside company purpose

• May also consider Non-Compete agreements

10. Know the Value of Due Diligence

• Process of investigating the financial and legal status of a transaction

• When?–Acquiring or licensing

assets/IP/company–Buying / sourcing for your business–Seeking investments/financing

10. Know the Value of Due Diligence

• What is involved:–Verify all IP is assigned/owned–Properly drafted license/purchase

agreements–Identify 3rd Party claims to IP–Quality of measures to protect IP–Validity of IP records–Confirm all registrations

11. Basics of an IP Strategy

• Part of a Business Plan• Consider:– What aspects of your business/products give you

a commercial advantage?– Why do customers use your services and/or buy

your products?– Is it your brand, your reputation or your

technology?– Where are you most at risk / where do you need

to protect yourself

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Questions:Please Ask and I will Answer

jill.link@ipmvs.com

Jill N. LinkMcKee, Voorhees & Sease, PLC801 Grand Avenue, Suite 3200

Des Moines, Iowa 50309515-288-3667