3. What is a toolkit?
Regardless of your pursuit in life, you
approach that pursuit with a toolkit
Your toolkit is
Information, documents and procedures
you rely one and utilize to fulfill that pursuit
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4. When do you use a toolkit?
Knowingly or unknowingly, you have
used different toolkits in your approach
to:
College
Jobs
Start-ups
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5. Why does a Start-up need a IP
toolkit?
In the beginning, IP may be all it has
Many pitfalls to IP protection
IP issues are easier to resolve when
detected earlier, rather than later
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6. What does a toolkit provide to
a start-up?
A toolkit provides a way for Start-up to
Capture IP
Document IP
Protect IP
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7. Basics of IP Toolkit
IP agreement provisions
IP capture mechanisms
IP protection mechanisms
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8. Basics of IP Toolkit
IP Agreements
Foundation Agreements
NDA (non-disclosure agreements)
Development Agreement
Employee Agreements
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9. Foundation Agreements
What should IP provisions detail?
Contributions of background IP
Who is contributing what to the start-up
The “what” needs to be specifically set out
Ownership of foreground IP
Created IP to be owned by start-up
Ownership of IP upon dissolution
Background and foreground
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10. Basics of IP Toolkit
NDA (non-disclosure agreements)
Solely for the purpose of disclosing information in
furtherance of business
Two general types
Unilateral disclosure agreements
Information flowing one-way
Mutual disclosure agreements
Information flowing both ways
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11. Unilateral Agreements
Disclosing party terms
Creates no relationship between the parties
All confidential and proprietary information remains that
of disclosing party
No right to use disclosed information
Treat all disclosed information as confidential
Disclosures may be in any form
Disclosures need not be marked as confidential
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12. Unilateral Agreements
Receiving party terms
Confidentiality provisions do not apply to
Previously known information (written or unwritten)
Independently developed information
Information properly acquired through other sources
Confidential information must be in writing and marked
as confidential
Sunset provisions
Agreement only applies to information disclosed during defined
period
Obligations of confidentiality limited in duration
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13. Mutual Disclosure Agreements
Confidential Information flowing both ways
Disclosing party and receiving party terms
Treat as if both parties are the receiving party in a
unilateral agreement
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14. Non-disclosure Agreements
NDAs are not development agreements
For initial sharing of information
Only relate to background IP
Do not cover foreground IP
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15. Development Agreements
Background IP Rights
Retained by originator
Joint venture
Other party will want license to use the background IP
Non-joint venture
No license to use background IP
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16. Development Agreements
Foreground IP
Sole ownership or joint ownership
Joint ownership - sounds right, but problematic
Other side must join in patent activities
Other side must agree to enforce
Sole ownership with license to other party
Royalty free
World wide
Cost sharing provisions for IP protections
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17. Employee IP Agreements
Hired to innovate
Obligation to assign to start-up
Ideas, expressions of ideas and inventions
protectable or not
conceived during employment
related to business of startup
first right of refusal for non-primary business
concepts
Confidentiality obligations
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18. Employee IP Agreements
Hired to innovate
Confidentiality obligations
Signed by employee
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19. Employee IP Agreements
Exit interview
Reminder of obligations
ideas conceived during employment
assist in securing protection
trade secrets
Signed by employee
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20. Basics of IP Toolkit
IP capture
Invention disclosure form
Purpose
Written document of created IP
Aids in future decisions (seek protection; maintain as
trade secret)
Aids in securing protection (first document patent
attorney will review)
Accessible to all innovators
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21. Invention Disclosure Form
Key provisions
General description of idea
Background of the problem being solved
Detailed description of the ideas
Closest known technology
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22. Invention Disclosure Form
Key provisions
Was outside funding used?
Has idea been disclosed outside of the
start-up?
NDA in place?
Manner of disclosure
To/by whom?
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23. Invention Disclosure Form
Key provisions
Has idea been offered for sale?
to/by whom
When
Assignment to start-up
Agreement to assist
Decision on how to protect (trade secret or
patent)
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24. Basics of IP Toolkit
IP Protection
Different types IP
Patents
Trademarks
Copyrights
Trade secret
Different types of acquisition and protection
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25. Trademark Protection
Protects the brand
Protection gained by actual use of the
trademark with the goods
Registration is optional
Federal registration has benefits
Nationwide constructive use
Enforce via federal courts
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26. Copyright Protection
Original expression of an idea
Manuals
Videos
Ownership agreement in writing
Work-for-hire trap
Registration is optional
Access to federal courts
Statutory damages
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27. Patent Protection
Formal application process to obtain
protection
Monopoly on the idea for 20 years
Utility patents
Provisional
Non-provisional
Design patents
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28. Patent Protection
Provisional Patent Application
Benefits
Can be inexpensive
No required format
Can be done quickly (staple and file)
“Patent Pending”
Best to use when
Impending disclosure not covered by NDA
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29. Patent Protection
Provisional Patent Application
Limitations
Offers no enforceable right
Operates as a placeholder at Patent Office
Requires enabling disclosure and best mode to
provide basis for non-provisional
False sense of security
Future developments not covered
Public disclose may impact foreign rights
Non-provisional and foreign filing deadline begin
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30. Patent Protection
Provisional Patent Application
Staged filing procedure
Ongoing developments
Quarterly staged filings
Updated with new embodiments
Updated with new developments
All four combined into non-provisional by 1 year
anniversary date
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31. Trade Secret Protection
Business information not readily known or
perceived by other companies that gives
the owning company a competitive
advantage
Can be almost anything
Processes
Hard to reverse engineer
Hard to police
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32. Trade Secret Protection
Business information
Business plans
Costs structures
Supplier lists
Target Customers
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34. Gain IP Knowledge
Understand basics of IP
An informed business partner is always
beneficial and attractive
Earlier identification of issues
Brinks Hofer Gilson & Lione
Primer on Intellectual Property
Toolkit with sample forms
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