1. Protecting Your ASSets – Intellectual Property Presented by Kirk Cesari CESARI INTELLECTUAL PROPERTY LAW AUSTIN, TX 512-921-9069 kcesari@cesari-iplaw.com 4/12/2011 1

2. What is Intellectual Property (IP)? A creative work, invention, idea, or useful information Trademarks Patents Copyrights Trade Secrets Confidential Information Examples: company or product names, products, inventions, music, photos, business plans, clients lists … potentially any idea or creative work valuable to your business. 4/12/2011 2

3. Intellectual Property Myths Intellectual Property doesn’t matter to my business. I can use the same strategies as some other company is using. Form contracts are great, I just plug in my business name and sign on the line. Software is not patentable. A big law firm can do it all, so I’ll just hire them for everything (self-promoting plug) 4/12/2011 3

4. Why IP matters… You have a business and you have competitors You have a great idea and you don’t want someone else to exploit it You are trying to get funding for your start-up What should you do? 4/12/2011 4

5. Protect your ASSets Contracts Employment and Independent Contractor Agreements Non-Disclosure Agreements (NDAs) Exclusivity Agreements, Development Agreements, etc. Trademarks Patents Copyrights Trade Secrets 4/12/2011 5

6. What can be a Trademark? A trademark is a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than goods. 4/12/2011 Page 6

7. Trademark FAQs Is registration required? No, but many benefits are provided What can be a trademark? A mark that is distinctive –it can identify a source of goods There are four general categories: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. The requirements for, and degree of, legal protection will depend upon which category it is in. 4/12/2011 7

9. Subject matter for a patent: machine, process, composition of matter, or article of manufacture

10. U.S. Patent Term –20 years from date of filing

11. Provisional Patent – establishes a filing data and acts as a 1-year placeholder for the applicant to file a regular (utility, etc.) patent application4/12/2011 Page 8

13. Licensing and royalty potential

14. Cross-licensing

15. Documentation of R/D efforts

16. Ammunition (via counterclaims of infringement)

17. May cause competitors to have to avoid

18. Rewards innovation

19. Protects capital investment4/12/2011 Page 9

21. In the U.S., Federal Registration provides the owner with several advantages

22. Registration may be made at any time within the life of the copyright

23. Works made for hire have a duration of 95 years from publication or 120 years from creation, whichever is shorter.4/12/2011 Page 10

25. Titles, Names, Short Phrases, and Slogans; familiar symbols or designs; mere variations of typographical ornamentation, lettering, or coloring; mere listings of ingredients or contents

26. Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices

27. Works consisting entirely of information that is common property and containing no original authorship (such as alphabetical white page listings)4/12/2011 Page 11

28. Trade Secrets “…any information, including a formula, pattern, compilation, program, device, method, technique, or process, that derives independent economic value, actual or potential, from not being generally known to the public or other persons who can obtain economic value from its disclosure and use and is subject of efforts that are reasonable under the circumstances to maintain its secrecy.” -Uniform Trade Secrets Act 4/12/2011 Page 12

29. Economically Valuable Information May include: “Know-How” information Positive or negative information that could be of potential use Information concerning customers or vendors Pending unpublished patent applications and disclosures Processes or compilations of information 4/12/2011 Page 13

30. Confidential Information Confidential Information may include: any Company proprietary information, technical data, trade secrets or know-how Such as: research, product plans, services, customer lists, markets, software, development, inventions, processes, …marketing, finances, or other business information. 4/12/2011 Page 14

31. Sharing of Confidential Information Limit distribution, only share with those who have a “need-to-know” have signed a contract that protects the information (NDA, employment agreement, contractor agreement, development agreement, etc.) Label all confidential information as such Properly dispose of Confidential Information Prior to sharing information with another, determine if you need an NDA to cover your discussions 4/12/2011 Page 15