3. Agenda
• Intellectual Property (IP) type breakdown: Patents, Copyrights, Trademarks, and Trade
Secrets
• IP rights in a startup’s life cycle
• The dangers of not protecting IP and using other’s IP without securing rights
• Protecting one’s IP
• Securing IP rights through licensing and collaboration
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4. Why Care About Intellectual Property and Licensing?
Offensive:
Secure Rights and Build Value
Defensive:
Avoid infringement, misappropriation and dispute
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5. Categories of Intellectual Property
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Trade Secrets Trademarks
Copyrights Patents
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6. Trade Secrets : The Protection
• Information which is not generally known or reasonably ascertainable that allows a
business to obtain an advantage (usually economic) over competitors or others
• A company can only protect is trade secret as long as it is kept confidential
• Examples: formula, source code,
manufacturing process, customer list
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7. Trade Secrets : The Limitation
• Maintenance of secrecy (marking documents, implementing security procedures (sign-in,
badges, firewalls)
• Reverse engineering and independent development
• General knowledge and skills of employees (residuals and know-how)
• Once disclosed the trade secret is no longer protected
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8. Copyrights: The Protection
• Copyright is a form of protection grounded in the U.S. Constitution and granted by law
for original works of authorship fixed in a tangible medium of expression. Copyright
covers both published and unpublished works.
• Exclusive rights: to copy, sell, import or export, create derivative works (works that adapt
the original work), perform or display
• Copyright may apply to a wide range of creative, intellectual, or artistic forms, or "works”
such as plays, movies, audio recordings, photographs and software
• Deciding to register the copyright
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9. Copyrights: The Limitation
• Copyright does not protect facts, ideas, systems, or methods of operation
• Independent creation
• Limited time for protection
• Changing technology and fair use exception
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10. Trademarks: The Protection
• A trademark is a brand name.
• A trademark or service mark includes any word, name, symbol, device, or any
combination, used or intended to be used to identify and distinguish the goods/services of
one seller or provider from those of others, and to indicate the source of the goods/
services.
• Although federal registration of a mark is not mandatory, it has several advantages,
including notice to the public of the registrant's claim of ownership of the mark, legal
presumption of ownership
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11. Trademarks: The Limitation
• Loss of trademark, the generic problem
• Trade erosion
• Carving out industry specific trademarks
• Protection overseas
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12. Patents: The Protection
• Subject matter: apparatus, process, methods, design patents
• How to obtain: file an application (provisional vs. non-provisional) with the USPTO
• Disclosure, statutory bars to patents, deadlines, timeliness, and filing date
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13. Patents: The Limitation
• Patent protection is the right to exclude not a right to practice
• The importance of timing (when to file and how long it takes)
• High cost to secure patent rights
• Costs to enforce patent rights and difficulties in enforcing patent rights once the
patents are granted
• One patent may not be enough
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14. Intellectual Property Life Cycle and Issues
• Founders (Assignments)
• Employees (Employment, assignment, non-compete)
• Consultants (Consulting agreements)
• University/Former Employers (Employment agreements)
• Products and services
• In-licenses, out-licenses and acquisitions
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15. • Dangers of not protecting one’s IP
» Cannot operate
» Losing money
• Dangers of not securing IP rights
» Financial disputes
» Criminal prosecution
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