PROTECTING YOUR BUSINESS IDEAS

Mary Juetten, Founder & CEO

AZBIA Open House January 15, 2014"TRAKLIGHT", "ID YOUR IP", "IP VAULT", and "IP CLOUD" are registered trademarks of The PIP Vault, LLC. © MMXIII The PIP Vault, LLC. All Rights Reserved.

Got Intellectual Property?Why Care…

• IP theft costs US companies $250 billion annually

• 100% of all companies have IP

• 700K new startups annually vs. 20% protected IP after 1st year

• IP is most valuable asset and not on your Balance Sheet

• Exclude competition; Attract investment (incl. crowdfunding); Leverage & license

• Avoid IP loss, infringement, or business failure

Disclaimer: This is intended to be general information. Nothing in this presentation constitutes legal advice. Please consult with an attorney before making any intellectual property protection decisions.

What is IP?

• Patents (utility & design)• Copyright ©• Trademark/Service mark TM SM ®• Trade secrets – unsung heroes

NO legal advice provided!

• Inventor• Website • Software• Restaurant• Traklight!

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Case Studies

IP Misconceptions

• IP is just for Tech Startups or Tech companies & Patents are the only IP for inventors

• Trade secrets are the easiest to protect because there is no registration.

• You can copy anything without a copyright ©

• You can copyright an idea.

• Domain = TM

• If I pay for it, I own it.

• Patents means right to make or sell

Start on the Right Trak

Do NOT start with creating a:

Campaign

Pitch

or

Business Plan

THIS APPLIES TO ALL FINANCING!Disclaimer: This is intended to be general information. Nothing in this presentation constitutes legal advice. Please consult with an attorney before making any intellectual property protection decisions.

Strategies:1.ID IP 2.Protect IP

WHY WHO

WHAT

WHEN

WHERE

✔

WHO: IP Ownership Challenges

• Multiple Inventors• Who you are? Employee of another company• Proper Assignment of IP Rights – personal versus

company• Assume that Ownership automatically extends outside

the US

• Date of Idea/Invention (First to Invent First INVENTOR to file)

• Date of Use• Date of Filing• Date of Conversion• Renewals

WHEN: Key Dates to Remember

• Idea• URL• Name• Know how• Employees• Contractors

WHAT: Business Plan/Funding Presentation

Strategies to Protect IP

• Do it Yourself:– USPTO.gov– Copyright.gov

• Hire a Professional:– Attorney, Consultant, Legal Zoom, Rocket Lawyer

• Secrets:– Notary, IP Vault, Copyright software

Ignorance is NOT a Defense

Be Careful:

Video

Copy

Business Plans

Questions?

Mary Juetten

mejuetten@traklight.com

@traklight

www.traklight.com

Equity Issues

LLC

VESTING

CORPVS.

Buy-Sell Language Provisions for Death or Divorce Different Classes of Units “Profits Interest” Language Valuation Formula Deadlock Provision

Operating Agreement Must Haves

Technical Co-Founder

Outsourcing Your Development

In-House Development

Secure Your IP

Technology Assignment Agreement or Exclusive License

• Broad as possible• Terms should be worldwide, right,

title or interest to company and forever (perpetual)

• Confidentiality • Ability to get injunctive relief• Strong Reps and Warranties

Working with a Technical Co-Founder?

Development, Consulting or Work Made for Hire Agreements

Work Made for Hire but Cover Your Bases

Master Agreement with SOW Attached

Reps and Warranties, Indemnity, Insurance

Non-Disclosure Agreements

Outsourcing Your Development?

To Non-Compete or not to Non-Compete

Proprietary Rights Agreements

In-House Development?

Technology Advisors

Advisory Board Members

Other Assistance

Actively protect it

Trademarks

Patents

Trade Secret Protection

IP Identification and Storage Product Traklight at www.traklight.com

Safeguard Your IP

INTERVIEW AT LEAST THREE EXPERIENCE—TECHNICAL,

BUSINESS PHILOSOPHY ASK FOR REFERRALS FLEXIBILITY VALUE

Find the Right Lawyer

Resources

Orrick's Start-up Forms http://www.orrick.com/Practices/Emerging-Companies/Startup-Forms/Pages/Forms-Technology.aspx

Gunderson Dettmer LLPhttp://bit.ly/QVgPb3

The Provisional Application

Ronald J. Kisicki, Esq.

275 N. GateWay Drive

Phoenix, AZ 85034

602-633-1793

© 2014 Woods Oviatt Gilman LLP

First Inventor to File

A

File

B

File

First Inventor to File

A

P.D. File

B

File

Option 1 – Public Disclosure

Advantages:• Easy• Inexpensive

Disadvantages:• Discloses your hand to the public• Foreign filing rights lost• Must file an application in the U.S. within one year• Places you on the defense to prove disclosure if third party

files first

Option 2 – File Provisional Application

Advantages:•Better (?) documentation of invention•Invention is held in secrecy•May preserve foreign filing rights•Provides foundation for non-provisional application•“Patent Pending” status•May extend the patent term

Disadvantages:•More costly•Can expose eventual patent to invalidity issues

Content

Must Include:•Specification that conforms to the disclosure requirements of 35 U.S.C. §112

• Enablement• Written description disclosure requirement

•Drawings – if needed to understand the invention

Need Not Include:•Claims

• But, without claims, later patent relying on the provisional may be invalidated if shown that inventor did not have a full grasp of his/her invention (i.e., fails written description disclosure req.)

Other Points

• In order to rely on the filing date of the provisional, the non-provisional must:

• be filed within one year of the provisional;• properly state that it claims priority from the provisional;• have at least one common inventor with the provisional;

and

• the claims of the non-provisional must be fully supported by the specification of the provisional.

Questions?

Copyrights & Trademarks

Ruth Carter, Esq.@rbcarter

Carter Law Firm, PLLCCarterLawAZ.com

DISCLAIMER

(cc) swimparallel

Copyrights

(cc) pdinnen

Minimum Requirements

Original work of authorship

fixed in a tangible medium

(cc) wwarby

Copyright in Business• Website content – verbiage,

photos, videos• Software code• Marketing materials• Product descriptions

Copyright Rights• Copy• Distribute• Display• Perform• Create Derivative

Works

(cc) Crystl

Trademarks

(cc) avlxyz, iPyo, marcopako

Purpose of TrademarksProtect Consumers

Inform them about the source & quality of goods & services

(cc) lululemon athletica

What’s the Difference?

TM ®

Cautionary Tale

(cc) MrSchuReads (cc) comedy_nose

More InformationTraklight

Traklight.com

Carter Law Firm, PLLCCarterLawAZ.com

ruth@carterlawaz.com