Zheng Liu January 18, 2015 Intellectual Property Law For Startups

Zheng LiuJanuary 18, 2015

Intellectual Property Law For Startups

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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Why Care About Intellectual Property and Licensing?Offensive: Secure Rights and Build Value

Defensive: Avoid infringement, misappropriation and dispute

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Categories of Intellectual Property

Intellectual Property Law For Startups

Trade Secrets Trademarks

Copyrights Patents

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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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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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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 Copyright covers both published and unpublished works.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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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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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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Trademarks: The Limitation•Loss of trademark, the generic problem

•Trade erosion

•Carving out industry specific trademarks

•Protection overseas

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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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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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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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•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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Zheng Liu

(650) 614-7699

jenliu@orrick.com

Questions?

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