Ip 102 b

INTELLECTUAL PROPERTY 102

Presented By Yuri L. Eliezer, Esq.

Intellectual Property Attorney

BEKIARES ELIEZER LLP

www.smartuplegal.com

About Me• Georgia Tech Electrical Engineer

• Registered Patent Attorney

• Entrepreneur:• Started as Patent Intern in High School

• Partner at FOUNDERS LEGAL®

• Bekiares Eliezer LLP

• Founder SmartUp Legal®

How This Presentation May Help You

• You Have Rights! Use them or lose them! • In today’s economy, intangible assets constitute nearly 80% of corporate value.

• Many Investors look for Intellectual Property

• Many Competitors look for Intellectual Property

• Your Goal:

• Identify which of your assets can be secured

• Leverage Intellectual Property Law to secure those assets

• Think BIG!

• May not seem important to you today, but you need to take the right steps today!

How This Presentation May Help You

• Know what steps to take to protect your rights when:

• Sharing your IP with others

• Partners in a Company

• Contractors you Hire

• Employees you Hire

• Investors in your Company

The Fruits of Your GeniusBreaking it down into Categories

Ideas and Inventions(Patents)

Artistic Works(Copyrights)

Brand and Reputation

(Trademarks)

Confidential Information

(Trade Secrets)

What Type of IP Protection?

What Is A Trademark?

• A source identifier that indicates that this product was made by you.

• Anything a businesses uses to distinguish its goods from those of another:

• Name / Logo / Slogan

• Packaging

• Design

• Sound

• Scent

• Protection limited to Registered Classes

Why do we have Trademark Law?

• Quality Control• Owner must not allow its marks to be used without regulation.

• Protection from Consumer Confusion• Consumers Should Not be Confused as to Origin of Product / Service

• Protection of Reputation• Competitors shouldn’t “leech” off the name and good will that you

built in your market

• Protection from Unfair Competition• False Endorsement / Advertising

• Passing off / Reverse Passing Off

1) the obligation of each partner to disclose all innovations to the company and not keep anything secret 2a) agreement to assign any patentable innovations to the company (note this is not an assignment itself) 2b) agree all copyrightable/creative content are work for hires (no assignment necessary) 3) mandatory cooperation in document execution 4) a grant of power of attorney to the company for registration of IP in the event of no cooperation or unavailability 5) grant back rights optional 6) no license to use IP (patents/patentable/copyrights/copyrightable/trademarks/trade secrets/ confidential info) outside of company.

Trademark Basics

• The more distinctive a mark, the greater protection provided under the law. • Fandango

• Marks that must acquire secondary meaning:

• Descriptive marks

• “PIZZA RESTAURANT”

• Geographic marks

• “NEW YORK PIZZA”

• Generic marks – Not protectable under trademark law – they describe the basic nature of the good or service, e.g. “Apple Co.” for a company selling apples.

Typical Trademark Mistakes

• Picking a “bad” mark and sticking with it• Searches should always be done prior to selecting a mark.

• Your trademark need not, and probably should not, be your business name.

• Domain name issues!

• Waiting to File Federal Registration• Loss of rights if someone files before you

• Waiting to Enforce your TM rights• Fast enforcement saves money (infringer has less money invested so more likely to

adopt different mark) and prevents loss of rights from non-enforcement

• Can put Rights on Hold 1(B) Filing

When to File for Trademark Protection

• When you’ve solidified your Brand Name!• Before filing, you can use the ™ symbol

• Once registered, you can use the ® symbol

• When you’ve done your research, ensuring no one else is using the Brand Name! (Can Hire Attorney to do the Research)

• Actually using the mark in interstate commerce is required to obtain registration.

• If you’re not yet using the mark, you can put the mark on hold with a Section 1(B) Filing.

• Priority to the name is important! • Rebranding is a Pain!


Types of Patents

Utility Patents• Process – “A method

of making plastic comprising...”

• Composition of Matter – “A plastic having the formula...”

• Machine – “A display device comprising a screen and knobs,...”

• Manufacture – “A tire comprising a steel belt encased in...”

• 20 Year Term

Design Patents• Covers ornamental

features on an article of manufacture

• Substantial overlap with copyright (sculpture), trademark (e.g., logos in soles of shoes) and trade dress (e.g., Coca-Cola fluted bottle)

• 14 year term

Plant Patents• Genetically Modified

Healthy Vegetables

Requirements for Patentability

To be patentable, an invention must be:1) Useful (35 U.S.C. §101)

2) New (35 U.S.C. §102)

3) Non-Obvious (35 U.S.C. §103)

A Patent is a Right to Exclude Others!

When To Keep a Secret

Patents become Public Disclosures!

Two Factor Test:

1. How Easy is your invention to reverse engineer?• If Easy File a Patent!

• If Difficult Keep it a secret!

2. How Likely are you to detect infringement?• If Easy File a Patent!

• If Difficult Keep it a secret!

Trade Secret Examples

• A proprietary blend of chemicals, secret ingredient (e.g. formula for Coca-Cola).

• A manufacturing process or “know-how.”

• A customer list.

• A supplier list.

• Inside business and financial information - Marketing plan, customer data, budgets, profit margins, forecasts, internal software, etc.

Leahy-Smith America Invents Act

• Enacted in March 2013

• Established a First-to-File Standard of Patent Examination• No More Poor Man’s Patent

• Corporate Lobby

• Established Micro-Entity Fee

• Timing is Important! Must be the First to File

Provisional Patent Applications

• “Saves your Spot in Line”

• 12 Months Patent-Pending Status

• Not Available for Public Inspection during Provisional Period

• Must be followed with a Non-Provisional Patent filing within 12 months

• Design Patents Excluded!

What type of Utility Patent Filing Should I go with?

• Start-Up’s Three Part Test:1. Innovation is Conceptual, not yet Launch Ready File a

Provisional!

• Filing Provisional for every iteration is permitted, can link all of them together in Non-Provisional Filing

2. Innovation is Launch Ready, not yet Funded File a Provisional!

3. Launch Ready and Funded File a Non-Provisional!

Top 4 Patent Mistakes

• Assuming you Know What’s Patentable and What isn’t Patentable

• Patentability v. Freedom to Operate• Just because you have a patent-pending/patent, doesn’t mean you aren’t infringing on third party

patents.

• Public Disclosure• 12 months in US• No grace period in many other Countries

• Waiting to Get Patent Protection• Must be the First to File! • Up-Hill Battle if you are beat to the patent-filing!

Quick Overview of Software Patents

• Originally, and still, protected under Copyright Law• Weak Form of Copyright Protection – Used for EULAs

• US is one of the Strongest Enforces of Software Patents• EU, not so much.

• Latest Court Rulings refine, not eliminate, Software Patent Protection




Copyrights Basics

Emphasize non-functional

What Qualifies for Copyright Protection?

• Literature - Musical Compositions

• Sound Recordings

• What’s the difference between Recordings and Musical Composition?

• Pictures / Paintings / Photographs / Sculptures

• But not the Subject Matter therein, only the artistic rendition

• Motion Pictures – Choreography - Architecture

• Weird Ones:

• Vessel Hulls

• Integrated Circuitry

• Software • Literary Work?

• Functional? -> Patents!

What does Copyright Law Protect Against?

• A Copyright is a property right in an original work of authorship that is fixed in a tangible medium.

• Protects you from unauthorized:

Reproduction

Adaptation

Distribution

Performance Display

COPYRIGHTS

A Copyright is a property right in an original work of authorship that is fixed in a tangible medium.

• Duration:

• Life of the author plus 70/95/120 years (a rat’s nest of exceptions)

• Protect Non-Functional Articles

• In general, Internationally Recognized

• Registration can be Retroactive

Copyright Considerations

• Ideas and Concepts are not Copyrightable• Fill-in-the-Blank Forms Not Copyrightable

• Characters, Themes, Plots do qualify

• Derivative Works require Licensing!• Transformative works do not require Licensing.

• “Work-For-Hire” -> Rights must still be transferred.

• Joint Authorship leads to disputes.• Transfer rights to a single entity.









What type of IP Protection?







Heat-Seeking Missile


What Do All of These Have in Common?

• ASPRIN

• ESCALATOR

• DRY ICE

• HEROIN

• VIDEOTAPE

• TRAMPOLINE

Joint Innovation

• Examples:• Conceptions / Ideas

• Inventions

• Business Model

• Technology

• Hardware

• Software

• Creative Copy

• Marketing Materials

• Executive Summaries

Joint Innovation

• Each Innovator owns 100% of the rights!• Can use without restriction, but must have accounting.

• Prone to disputes!• No real way to divide/determine % of contribution

• Indivisible

• No real way to prevent from using your ‘portion’ of the IP

• Only Applies to Protectable Innovation

The Solution

• Assign and Record your Rights to the Entity

• Solid IP Assignment and Transfer Agreements

• Formal “Cross Licensing” Agreement between Contributors

Assign and Record your Rights to the Entity

• Pros• Solves Joint Contributor Problem

• Prevents From Piercing the Corporate Veil

• Builds Valuation of Company (Investors want to see the IP owned by the Company that they invest in)

• Cons• Ownership belong in Company as a whole, in control in accordance to Corporate

Governance Docs

• Ownership/Control may get Diluted as more shareholders come on board!

• Lose your rights as an individual

Partner/Shareholder and Employee Agreements

• Mandatory Non-Disclosure of Confidential Information/Secrets

• Mandatory Disclosure of Innovations/Derivative Works

• Mandatory Assignment of Innovations (should meet at least one of the following factors)

• Within Scope of Company Business

• Within Scope of Employment

• Using Company Resources

• During Company Time

• Mandatory Execution of Assignment Documents

• Company should receive Power of Attorney in the event of non-cooperation

• No License to Use IP outside of Company

• May accompany a Non-Compete / Non-Solicitation

• What Happens During Dissolution?

• Grant Back?

Contractor Agreements

• Start with an NDA when you can!

• (not all contractors are willing to sign before making a deal)

• What a good NDA Should Have:

• Don’t Disclose

• Don’t USE

• - I own your contributions

• - I have interest in your derivations

Contractor Agreements

• Contractor Agreements• Contract Must be Clear as to Ownership!

• If the Contract is unclear, assume that the Contractor has retained the rights and is only providing you with a License to those rights.

• This means that the contractor can re-use your material for other clients!

• “Work for Hire” – only covers Copyrights!

• Patent Rights must be affirmatively Transferred after work is completed.

Filing for IP Protection

• Common Misconception: “I’m automatically Protected”• Requires Affirmative Steps, often time-sensitive.

• When do you do it?• Relatively Inexpensive, but not terribly time-sensitive:

• Filing Trademark Applications

• Filing Copyright Applications

• Expensive, and very time-sensitive

• Filing Patent Applications

But it’s too Expensive to File for Patent, What Do I do?!

• Micro Entity Status Filings

• 75% reduction in Government Patent Filing Fees as of 2013!!!

• File a Provisional Patent!!

• Puts your patent rights on ‘hold’ (saves your spot in line for a patent) for a period of 1 year.

• Allows you to market your product as “Patent-Pending” during the one year period.

• Use the 1 year period to:

• Raise Money

• Continue Development

• Share your Idea knowing no one can patent it before you do!

• CATCH: Must file full patent application within 1 year or your patent priority is lost!

Enforcing your IP Rights

• Common Misconception: “I don’t need IP because I can’t afford to enforce it.”

• While it may be true that enforcing your rights is expensive, consider that your rights last for 20+ years! You may not be able to afford enforcement today, but if you don’t take the rights steps today, you won’t have anything to enforce when you can finally afford to do so!

Affordable Means to Enforcement

• Cease and Desist Letters• But be careful! Do your homework! You don’t want to involuntarily

drag yourself into litigation that you can’t afford!

• Letters must be very carefully crafted not to threaten any litigation – otherwise: Declaratory Judgment!

• Study your Infringer to make sue they don’t have any counter-claims against you!

• Do you violate any of their IP?

• Can they invalidate any of your IP?

Notice Requirement

• The Law requires you to notify the infringing party before you are entitled to financial relief for infringement.

• New Laws allow for “Virtual Patent Marking” – thereby alleviating the requirement of direct notice on infringers.

• www.PatentSeal.com

http://www.patentseal.com/

Licensing

• Rare for Startups.

• Granting a License (limited permission) to use your intellectual property• Can be limited in Scope

• Can be limited in Use

• Can be limited in Territory

• Can be limited in Time

• .. You control how others can use your IP!

• Can be a good revenue stream!

• Software companies do this all the time with subscription models and EULAs!

Who Owns the Rights?

• Scenario One

A first co-founder provides all of the ideas for the invention, and the second co-founder performs the steps in making the ideas into a developed app. Who can claim IP Ownership?


• Scenario Two

A first co-founder provides all of the ideas for an artistic work, and the second co-founder creates the actual work. Who can claim IP Ownership?


• Scenario Three

Both co-founders conceived of the ideas for the invention but hired employees/contractors to develop the idea… Who can claim IP Ownership?


• Scenario Four

A contractor/employee provides an idea for a additional feature for a product, but his employer has developed the original product. The employer agrees to include the additional feature and provides the contractor/employee with all of the resources and financial support in adding the additional feature into the product.

Who should be considered a Inventor/Author?


• Scenario Five

A company founder conceives of features A, B, and C for an app, and teams up with another co-founder who develops the application. During development, the developing co-founder contributes features D, E, and F.

Who can claim IP ownership?

What if not all features are entitled to IP in the first place?

My Contact InfoYuri Eliezer, Esq. [email protected]@Smartup_

ATLANTA TECH VILLAGE Suite 5553423 Piedmont Road, NEAtlanta, GA 30305

To schedule a consultation with me please visit SmartupLegal.com and click consult!

mailto:[email protected]

http://www.smartuplegal.com/

http://www.smartuplegal.com/