ip crash course for startups

1. ip crash course for startups: a practical approach ernest grumbles merchant & gould 1.27.2010

Creations :

technology/products

brands

writings/images/sound

technology

patents

trade secrets

brands

trademarks

trade dress/shapes

writings/images

copyright

excludeothersfrom use of an invention.

reward inventors for alimitedperiod

all countries have patent systems

market exclusivity

strategic tool against competitors

licensing revenue streams

build value in business patent pending

set up company for investment, acquisition

identify inventions

maintain secrecy

gather information and prepare an application

file with the pto

hang on the wall

18 months to 5 years from filing of application.

length varies by technology

software patents up to 5 years

Claims may never issue.

$500 to $5000 for provisional application

$4000-$18,000 for non-provisional application

depends on technology, business goals and timing

20 years from filing

once it dies, its dead

continuation-in-part applications

search before new tech release

patent litigation aint cheap

$3 million in fees/costs would be a good deal for an active case

cases can last 2-5 years

do you know your IP?

does the company own the ip??

what tech drives revenue?

confidentiality

provisional = quick patent pending

periodically review R&D

confidential information that has value from not being generally known

has protection only as long as secret kept like the Coke formula

protected by statute (like Uniform Trade Secrets Act) and contract

build value in business proprietary formulas/processes

preserve market advantage

keep secret forever cant with patents

preserve patentability of inventions

maintain secrecy of data

identify inventions

control access

consider a log

you own as soon as you create

no formal filing process

cost of development

cost of maintaining secrecy

perpetual if it can be maintained as such

coke formula

the rabbit has to stay in the hat

when to sue?

complex litigation

often bundled with employee-related disputes (coke-pepsi)

injunctions!

costs - $400k-$3 million

confidentiality policies (CPs)

use NDAs when possible

mark confidential materials as such

protect sensitive materials (or facilities)

exclusive use of brand for specified goods or services

rights based on use in the marketplace

U.S. federal and state level (statutes and common law)

all countries have trademark systems

market exclusivity for brands unique association

promote customer loyalty (TONY THE TIGER)

prevent customer confusion

strategic tool against competitors

build value in business

word mark:EXXON

stylized word mark:

design mark:TONY THE TIGER

color:yellow for sticky note pads (Post-Its)

product shape:the Coke bottle

identify brands (incl. ones to be used)

evaluate market significance/strength of mark

search!

federal v. state

file application

prosecute to registration

common law rights upon use

federal registration process - can take 18 months

state registrations much quicker

trademark search - ~$700

U.S. tm app. - ~$1000 (single class).

up to $2K in additional prosecution costs

state tms much cheaper

foreign applications - generally more

perpetual???

registrations indefinitely renewable

STELLA ARTOIS claims rights back to1366

when marks die ASPIRIN, ZIPPER, DRY ICE, ESCALATOR (generic terms)

sue for likelihood of confusion (similar mark on similar goods)

trademark litigation ~$400K-$2M.

most disputes settled

cases can last 1-3 years.

communicate with marketing/product teams on brands

search before you sell!

prioritize revenue-driver brands

file Intent to Use (ITU) applications for quick protection

maintain uniformity of use

enforce rights

protects writings/images/sounds

inexpensive to register

protection lasts over 100 years

register soon after public release

protected by U.S. statutes

good for company code, manuals, images

ip crash course for startups

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