ip strategy – law 489 / entr 599cfe.umich.edu/.../2016/02/syllabus-entr...property.pdf · ip...

IP STRATEGY – LAW 489 / ENTR 599

Wednesday and Thursday 8:45am-10:10am 138 Hutchins Hall

Bryce Pilz

3018 South Hall 734.764.6981

[email protected]

INTRODUCTION

This course covers the legal strategy related to intellectual property and innovation for early-stage technology ventures. We will use the life cycle of a technology startup – from invention and early assessment, through incorporation and product development, through growth, and on to a major financing event or exit – as a framework to analyze the intellectual property and innovation legal strategy behind creating and executing a scalable and repeatable business model. Through this process, this course will necessarily provide an overview of various areas of substantive law, such as patent, copyright, trademark, trade secret, contract, antitrust, publicity, advertising, incorporation, and financing. This course will also endeavor to identify and analyze the specific documents used in securing and developing proprietary technology. Lastly, this course will emphasize the need to align a company’s intellectual property strategy with its business strategy – in fact, one could argue they should be one and the same. The class is comprised of a mix of law students and students in the Entrepreneurship Certificate program in the College of Engineering. Accordingly, this course seeks to cover both the roles of (i) legal counsel advising either a startup or the investors who invest in startups; and (ii) startup founders. This course is based around working on actual technological projects on which the Entrepreneurship students are working (and will “bring” into class). It is assumed that each Entrepreneurship student has such a project. Any Entrepreneurship student that does not have such a project must notify me in advance of the first class. Disclaimer: Please note that while law students will be working directly with non-law students, neither the law students nor myself will be functioning as attorneys in this course. Nothing in this course should be interpreted as forming an attorney-client relationship or the offering of legal advice. All of our work in this course will be performed for the purposes of learning and should not be used as final legal analysis. It is important that everyone in the course be permitted to speak freely, so that we can all learn from each other and from our own mistakes.

SPECIFIC THINGS YOU MUST LEARN FROM THIS COURSE We will cover a lot of material. At the very least, you should leave this course with a solid understanding of the following: 1. The difference between holding IP rights and freedom to operate; 2. For the major types of IP (patents, copyrights, trademarks, and trade secrets), what rights they include, how to obtain those rights, and how to avoid unnecessarily losing those rights. 3. How to use IP to protect a competitive advantage in a target market. 4. How to identify and address risks related to IP infringement. 5. How to avoid common IP stumbling blocks for startups, including: selecting a name, securing ownership of IP from the creators; the dangers associated with past employment. 6. The basic aspects of major legal milestones for an early-stage technology venture, such as incorporation and financing. 7. How IP (and other early-stage legal decisions) align with a company’s business model and strategy.

WORK PRODUCT, DELIVERABLES, AND GRADING

Grades are determined based on the following work product:

Item Deadline % of Grade

In-class Grade (contributions to class discussion and in-class problems)

Each and every week

20%

Take-Home Assignments Throughout the course

40%

Final Presentation & Project End of semester 40%

About the class work product: (1) In-class grade (contributions to class discussions): I will utilize a variation of the “flipped classroom” methodology. For most classes, you will be expected to understand the basics of the concepts prior to class through the readings, videos or other background materials. We will primarily use class time for discussions, in-class exercises, and occasionally guest speakers. Therefore, you are responsible for understanding the basic intellectual property concepts prior to class so that you can meaningfully contribute during class. (2) Take-home Assignments: Out-of-class assignments will be due throughout the semester. These assignments are due by email to both me and my teaching assistant ([email protected]) by 10:00pm on the evening prior to the due date. The assignment you

turn in may be used as an example for class discussion. You should also bring a copy of this assignment to class for discussion purposes. Wherever possible, I have included advanced variations, or advanced add-ons, to problems. It is entirely up to you whether you want to take on the advanced problem. Some advanced problems cover topics not covered in readings, so you will need to either perform your own research or have some experience with the topic. These advanced problems are aimed to “meet each student where they are at” with respect to their knowledge of IP. Assignments will be graded as follows: • 0 (assignment not turned in or without a reasonable effort); • ✓- (below the expected level of performance) • ✓ (within the general range of the expected level of performance) • ✓+ (exceptional performance) Most assignments are due prior to the day when we cover that content in class. If you feel you misunderstood an assignment, you may submit a revised assignment and I will take that into account when grading your assignment. When quantifying final grades, I generally weight a ✓- as a “1,” a ✓ as a “2” and a ✓+ as a “3” in assigning a numerical value to a student’s overall performance on take-home assignments. (3) Final Presentation and Project: Each entrepreneurship student will make a short presentation to me and at least one law student outlining the IP strategy for a potential startup based on the entrepreneurship student’s assigned technology. At least one law student will be assigned as a potential investor, or counsel to a potential investor, and will be tasked with scrutinizing the entrepreneurship student’s IP strategy. These presentations will take place during designated times (outside of class) during the final weeks of the course. You only have to attend your presentation (or the presentation to which you have been assigned). At the end of the semester, the entrepreneurship student will submit a final written report outlining their IP strategy (and addressing any issues pointed out in their presentation). The final project for law students will be a written analysis of the final report submitted by the entrepreneurship student, written from the perspective of a potential investor. The law student’s final reports will be due approximately a week after the entrepreneurship students provide their final report.

OFFICE HOURS My office hours are by appointment.

MISCELLANEOUS CLASS POLICIES Applicable Law School and University policies are provided here: http://www.law.umich.edu/currentstudents/studentservices/handbook/Pages/PoliciesandRegulations.aspx. I will highlight a few here: Honesty and Integrity – Society and various laws and regulations hold both lawyers and entrepreneurs to the highest ethical and moral standards. This class is no different. If you obtain an idea or concept from another source, you must cite the other source.

Classroom and Course-Related Behavior – You must be courteous and polite to the other members of the class. This means, at the very minimum, listening to and considering what they say. This class will expose you to people of difficult cultures, mindsets, and ambitions. You must be respectful, and you will hopefully learn from the different perspective in this class. Use of Laptops and Other Technology –You are not permitted to use laptops, tablets, or similar products during any lecture or class discussion. I will provide a copy of my lecture slides after each class. You may bring laptops or other devices to class to use in group work (e.g., you might find it useful to access the internet when discussing assignments in groups). Disabilities - If you think you need an accommodation for a disability, please let me know at your earliest convenience. Some aspects of this course, the assignments, the in-class activities, and the way I teach may be modified to facilitate your participation and progress. As soon as you make me aware of your needs, we can work with the Office of Services for Students with Disabilities (“SSD”) to help us determine appropriate accommodations. SSD (734-763-3000; http://ssd.umich.edu/accommodations) typically recommends accommodations through a Verified Individualized Services and Accommodations (“VISA”) form. I will treat any information you provide as private and confidential.

SUBSTANTIVE COURSE COVERAGE Required Readings: The required readings are either linked in this syllabus or provided on Canvas. Recommended Materials: While not required, the following materials may be useful resources for background reading on IP and/or business creation.

• Not So Obvious: An Introduction to Patent Law and Strategy, by Jeffey Schox (September 2013 Edition) – This is an extremely well-written, plain-language primer on patent law and strategy written by a patent attorney that focuses on representing startups.

• Essentials of Intellectual Property: Law, Economics, and Strategy, Second Edition, by Alexander Poltorak, and Paul Lerner – This book is also written for non-lawyers and

Non-‐public Discussions

In order to allow students to explore the possibility of patent protection for the technologies with which they are working, the scientific content of projects discussed in class or between members of this class will remain confidential until the inventor, University’s Office of Technology Transfer, or its licensee, whichever is applicable, has otherwise publicized it, or, at most, for a period of six months following the last day of this course. All entrepreneurship students have already signed nondisclosure agreements with the University. All law students will sign nondisclosure agreements with the University covering the proprietary information disclosed during this course.

provides an overview of intellectual property (mostly focusing on patents) and various strategies for exploiting intellectual property.

• The Business of Intellectual Property, Christopher M. Arena and Eduardo M. Carreras – This book was written by two IP attorneys at Woodcock Washburn with strong business backgrounds. It does a great job of tying IP to a company’s business model. •Business Model Generation, by Alexander Osterwalder & Yves Pigneur – This is an extremely easy to read handbook on business creation and is helpful for lawyers or technologists with little or no business background. •This Week in Startups, hosted by Jason Calcanis: http://thisweekinstartups.com. Weekly online videos and podcasts the are helpful for understand the culture and thinking of today’s successful entrepreneurs.

Course Content: This course tracks the life cycle of a technology startup – from invention, through entity formation, beginning product development or operations, financing, continued growth, to an exit – exploring the IP issues most relevant along the way as we learn how to build an IP strategy for a real-world, high value, scalable, technology-based venture. This approach attempts to provide a useful framework for thinking about IP strategically. Recognize that this framework is an extreme generalization. As you might imagine, different issues concerning IP arise at different times for different ventures. As just a few examples, freedom to operate might be highly relevant even prior to formation (e.g., Napster), and invention typically continues throughout a startup’s lifecycle. The following schedule provides the class topics, readings, and any assignments for each week. All “Readings,” “Lecture Videos,” and “Take Home Assignments” are mandatory work prior to each class, as further described below:

I. INTRODUCTION Prior to discussing IP strategy questions, it is essential for you to have an introductory vocabulary concerning IP. In particular, after the first class, you should understand the differences between patents, copyright, trademarks, and trade secrets, and how they each may apply to particular technological concepts. In the first class, we will also introduce ourselves to one another and overview the class syllabus and requirements. September 2 (Wednesday) – Introduction to Class

Topics: Class requirements and content; student introductions; Overview of IP strategy for entrepreneurial ventures. Readings: •Syllabus (Canvas) •Excerpt from Intellectual Property in the New Technology Age, pp. 24-32 (Canvas) •Excerpt from The Business of Intellectual Property, by Christopher M. Arena and Eduardo M. Carreras, pp. 185-194 (Canvas). •”How to Tell What Patents Are Worth,” by Joseph G. Hadzima, Jr., Forbes June 25, 2013: http://www.forbes.com/sites/forbesleadershipforum/2013/06/25/how-to-tell-what-patents-are-worth/ Lecture Videos: •Overview of the Categories of Intellectual Property:

http://www.youtube.com/watch?v=-8G1iwkWzBs Background Reading: •Excerpt from Business Model Generation (Canvas).

September 3 (Thursday) – Tech Presentations – Each Entrepreneurship Student will present an overview of their technology projects covering: (i) background of their project and description of the problem they are solving; (ii) overview of the technology and the status of development; (iii) overview of any existing steps taken to protect the IP (e.g, patent application filings).

Readings: •From Lab Bench to Innovation: Critical Challenges to Nascent Academic Entrepreneurs, Roman M. Lubynsky: http://www.kauffman.org/~/media/kauffman_org/research%20reports%20and%20covers/2013/05/fromlabbenchtoinnovation Lecture Videos: •Overview of Patent System: http://www.youtube.com/watch?v=4IVFB6zAss4 •Patent Remedies and Why to Patent: http://www.youtube.com/watch?v=ORrcMOrZGsA •Anatomy of a Patent: http://www.youtube.com/watch?v=dZGdXDqq82k

II. INVENTION AND EARLY ASSESSMENT

A tech startup company is generally preceded by the creation of a technological innovation. Upon creation of this “invention,” entrepreneurs” will usually assess whether they can create a repeatable and scalable business model based on that invention. Part of this early assessment should include analyzing the potential intellectual property rights related to the invention. From an intellectual property perspective, one does not own an invention. Rather, one can hold certain intellectual property rights in that invention. Those rights include: patent rights, copyrights, trademark rights, trade secrets rights, and other legal rights that may protect aspects of an invention. At the time of creation, generally speaking, the two most relevant types of intellectual property are patent rights and copyrights. These two forms of intellectual property can be used to protect fundamental aspects of a technology (that might have importance regardless of the particular features included on an eventual product developed by the company). In particular, we will examine what rights do patents and copyrights provide and how does one obtain those rights. Additionally, at an early stage, it is helpful to understand the competitive intellectual property landscape. In other words, what third party intellectual property rights could prevent the entrepreneur from executing a chosen business model. While a formal freedom to operate assessment typically does not take place until a company understands the specifics of a product it will seek to market, we will discuss patent freedom to operate now in order to understand how to preliminarily assess the competitive intellectual property landscape. September 9 (Wednesday) – Intro to Patents

Topics: The patent system; What are patent rights?; How to read a patent and understand patent claims; Obtaining patent rights and patent prosecution; Beginning discussion on patentability; Locating public information about patents; What is prior art?; Avoiding problems with public disclosures. Readings: •A Patent System for the 21st Century, Merrill & Elliott, http://www.nap.edu/html/patentsystem/143-154.pdf •Gillette v. Energizer (Canvas) •Overview of patent application process: http://www.ipwatchdog.com/2011/07/31/an-overview-of-the-u-s-patent-process/id=18460/ Lecture Videos: •What are Patent Rights: http://www.youtube.com/watch?v=4Cw6BrwfJEw •Patent Term http://www.youtube.com/watch?v=XFXricFtgdY •Patent Application Process http://www.youtube.com/watch?v=acn2tV9mnTU

Take Home Assignment #1

Patent Rights & Claim Drafting (Canvas) Due September 8, 10pm

Background Readings: •How to read a patent: http://www.bpmlegal.com/howtopat5.html •How to read a patent in 60 seconds: http://www.danshapiro.com/blog/2010/09/how-to-read-a-patent-in-60-second/ •USPTO flowchart of application process: http://www.uspto.gov/patents/process/index.jsp

September 10 (Thursday) – Understanding Patent Claims & Building a Patent Portfolio

Topics: A further examination of specific patent claims to understand what makes a commercially valuable patent claim; Using continuations and continuations in part to build a patent portfolio; Understanding how to obtain international patent rights. Readings: •Staying in the Game: Strategic Use of Continuation Applications: http://www.patent-innovations.com/documents/201204LimitedMonopoly-StrategicUseofContinuations.pdf •Driving Innovation: Intellectual Property Strategies for a Dynamic World, Chapter 9, “Strategy Tools: Policies and Practices for Managing Intellectual Property” pp. 147-162 (Canvas) •http://www.fenwick.com/fenwickdocuments/patent_portfolio_dev.pdf • Tech Crunch article on foreign patents: http://techcrunch.com/2012/08/25/patents-are-worthwhile-for-startups-to-pursue-in-the-us-but-not-abroad/ Lecture Videos: •Continuation Patents: https://www.youtube.com/watch?v=84YX3J9dehc •International Patent Protection: http://www.youtube.com/watch?v=qifUxzCcLs4 Background Readings: •Patent Strategies for Start-up Technology Companies: http://technologybar.org/2010/11/patent-strategies-for-start-up-technology-companies/

September 16 (Wednesday) – Patentability

Topics: What makes an invention patentable? Prior art searching; When is an invention obvious?; Patent issues in customer discovery; Selecting a patent attorney. Readings: •Leapfrog v. Fisher-Price (Canvas)

•Excerpt from Not so Obvious: An Introduction to Patent Law and Strategy, pp. 95-99 (Canvas) •In re Klopfenstein (Canvas)

Lecture Videos: •Patentability and Eligibility Overview http://www.youtube.com/watch?v=gTaqOoLNGWs •Patentability: Novelty http://www.youtube.com/watch?v=eXKAqIuCGTU •Prior Art http://www.youtube.com/watch?v=VkhsKUavxw0 •Patentability: Obviousness http://www.youtube.com/watch?v=YFrPLYvA5b8 •Public Disclosure Problems: http://www.youtube.com/watch?v=mAMsKSwFK7Q •Provisional Patent Applications: http://www.youtube.com/watch?v=-Fus5tKXWaY


Prior Art Searching (CTools) Due September 15, 10pm

September 17, Thursday –Software Patents and Copyright Basics

Topics: What does copyright protect? How to protect a user interface? What aspects of software embodied inventions can be protected by patents? Readings: •Jessica Littman, Digital Copyrights, Chapter 1: Copyright Basics, pp. 15-22, http://deepblue.lib.umich.edu/bitstream/2027.42/56221/2/Digital%20Copyright.pdf •Lotus v. Borland (Canvas) •DDR Holdings v. Hotels.com (Canvas) •Excerpt from USPTO Interim Subject Matter Eligibility Guidelines (review flowchart and section I of guidelines). (Canvas) Lecture Videos:

•Patent Eligibility: http://www.youtube.com/watch?v=fOobDz4-kH8 •Patentability: Written Description/Enablement http://www.youtube.com/watch?v=AuTqb_HqnWY •Copyright Overview http://www.youtube.com/watch?v=WbzrFSFCZgA •Ides/Expression http://www.youtube.com/watch?v=WxcvodQWtfM

•Copyright Registration http://www.youtube.com/watch?v=7osrpeyo4Mw •User Interface Issues http://www.youtube.com/watch?v=QhjOSvXdPXI •Software: Patents v. Copyrights https://www.youtube.com/watch?v=uGzrgMIXLpk September 23 (Wednesday) – Competitive IP Landscape and Patent Freedom to Operate

Topics: Understanding the scope of patent claims; Claim construction and claim charts; Noninfringement opinions; Willful infringement; IP landscaping; Invalidating third party patents; Challenging issued patents. Readings: •Designing Around Patents, http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=39b1359b-4077-4523-90d2-48ed77895ee8 •Civix v. Verizon, Expedia, and Travelscape (Canvas) Lecture Videos: •Freedom to Operate

http://www.youtube.com/watch?v=NkVoOhTFVyM •Claim Construction and Claim Charts

http://www.youtube.com/watch?v=lIfb0VsI5OM •Designing Around the Patent of Another

http://www.youtube.com/watch?v=fsarnfBiS6U •Willful Infringement

http://www.youtube.com/watch?v=RN5ssB73WK0 •Invalidating Third Party Patents

http://www.youtube.com/watch?v=DcNprHNWEUo •Defending Against Patent Assertion http://www.youtube.com/watch?v=OslazsnzHEc


Competitive IP Landscape Assignment (Canvas) Due September 22 10pm

Background Readings: •Presentation: http://www.slwip.com/services/documents/2010_MidwestIP_Presentation_FTOPPT.pdf • Video on one IP firm’s methodology for IP landscaping: http://vimeo.com/58204163

September 24 (Thursday) – Guest Speaker: Victoria Shumate from USPTO

Topics: Overview of USPTO; how does an examiner approach a patent application; new initiatives at PTO to improve patent quality and efficiency; tips for obtaining commercially valuable patents; overcoming examiner rejections; the USPTO’s new regional offices. Readings: •USPTO blog from July 13, 2015, “Update on our Enhanced Patent Quality Initiative”: http://www.uspto.gov/blog/ •USPTO blog from June 30, 2015, “Update on our Regional Offices”: http://www.uspto.gov/blog/

Guest Lecturer – September 24

Victoria Shumate

U.S. Patent & Trademark

Office

Victoria Shumate graduated from the University of Michigan College of Engineering with her Bachelors and Masters in Biomedical Engineering. She is currently a Supervisory Patent Examiner at the U.S. Patent & Trademark Office in Detroit, Michigan. Supervisory Patent Examiners have the primary responsibility for training examiners in an “Art Unit” and also review patent examinations themselves.

September 30 (Wednesday) – Design Patents

Topics: Overview of design patents; What are copyrights; Obtaining copyrights; Protectable expression v. ideas. Readings: •Design patents overview: http://www.ipwatchdog.com/2011/12/20/design-patents-the-under-utilized-and-overlooked-patent/id=21337/ •Non-Final Re-exam Rejection of Apple Design Patent (Canvas) Lecture Videos: •Design Patent Overview: http://www.youtube.com/watch?v=_s29pUAtSII

Take Home Assignment #4 Design Patents / Copyrights (CTools)

Due September 29 10pm

Background Readings: •USPTO Design Patent App. Guide: http://www.uspto.gov/patents/resources/types/designapp.jsp

•Design Patent Treatise: http://patentlyo.com/media/docs/2012/12/2012-12-17_design_patents.pdf

III. ENTITY FORMATION There are many reasons to launch an entrepreneurial venture through a legal entity such as a corporation. One of the reasons is the liability protection such entities provide to shareholders. Another important reason, is that a corporation is an efficient mechanism for holding intellectual property created by the founders. The formation stage, however, presents several critical intellectual property issues. These include: transferring into the entity all rights related to existing intellectual property in technology the entity will use and selecting a name for the entity, and perhaps a product or service. October 1 (Thursday) – Incorporation: Selecting and Structuring the Entity Topics: When and why to incorporate? What type of entity to form? How to structure an entity? Readings:

•Entity Formation Part 1 of 3: When should you form an entity for your business?: http://www.wolverine-startuplaw.com/2013/04/11/entity-formation-part-1-of-3-when-should-you-form-an-entity-for-your-business/ •Entity Formation Part 2 of 3: Selecting the form of entity: http://www.wolverine-startuplaw.com/2013/04/12/entity-formation-part-2-of-3-selecting-the-form-of-entity/ •Entity Formation Part 3 of 3: Converting from a Michigan LLC to a Delaware C-Corporation: http://www.wolverine-startuplaw.com/2013/04/13/entity-formation-part-3-of-3-converting-from-a-michigan-llc-to-a-delaware-c-corporation/ •Excerpt from Techstars: Do More Faster -- Avoid Co-Founder Conflict by Dharmesh Shaw (Canvas)

October 7 (Wednesday) – Guest Speaker – Chris McCleary, Senior Counsel for Spotify Readings:

•Spotify Case Study: http://www.smartinsights.com/digital-marketing-strategy/online-business-revenue-models/spotify-case-study/ •How many issued patents does Spotify have? •How many published patent applications does Spotify have? •When did it file its first patent application? •How many registered trademarks does Spotify have?

Guest Lecturer – October 7

Chris McCleary graduated from Michigan Law School in 2000. After beginning his career at Wilson Sonsini, Chris has served as inhouse counsel for technology companies such as Rovi, EchoNest, and most recently Spotify.

Chris McCleary Spotify

October 8 (Thursday) Intellectual Property Ownership

Topics: Inventorship, assignments of intellectual property, copyright works for hire. Readings: •DDB Tech (Canvas) •Stanford v. Roche (Canvas) •Emerging Companies Guide: Ownership of Copyright and Transfer, pp. 276-281 (Canvas) Lecture Videos: •Patent Inventorship http://www.youtube.com/watch?v=99pkTbapZGw •Joint Inventorship http://www.youtube.com/watch?v=xNnuKMMgTiE •Joint Ownership

http://www.youtube.com/watch?v=B_YNIFraKdo •Patent Ownership http://www.youtube.com/watch?v=SQ6UIca_gkc •Past Employment Issues http://www.youtube.com/watch?v=B6VntJA3zZY

Take Home Assignment #5 IP Ownership (Canvas) Due October 7 10pm

October 14 (Wednesday) –Introduction to Trademarks: Selecting a Name and Other Early Trademark Issues

Topics: Introduction to Trademarks; Clearing a name; When to register for federal trademark protection; Properly using a trademark. Readings: •Trademark Primer: http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm •Pure Imagination v. Pure Imagination Studios (Canvas) Lecture Videos: •Trademark Overview

http://www.youtube.com/watch?v=qV5KrwX3jMA •Trademark Registration

http://www.youtube.com/watch?v=f01t6PmND0A

•Distinctiveness: Selecting a Strong Name http://www.youtube.com/watch?v=Vyu3Ql6RaBY

•Performing and Initial Trademark Clearance http://www.youtube.com/watch?v=h1qZuqBa_z4&feature=youtu.be

•Likelihood of Confusion http://www.youtube.com/watch?v=ANBOzVU6JDw

Take Home Assignment #6 Selecting a Name (Canvas)

Due October 13 10pm

October 15 (Thursday) – Privacy Issues Topics: What non-IP legal regimes apply to personal information? What privacy and security best practices should technology startups adopt? Readings:

•Best Practices for Mobile App Developers: https://www.cdt.org/files/pdfs/Best-Practices-Mobile-App-Developers.pdf

Guest Lecturer – October 15

Gautam Hans

Policy Counsel and Director Center for

Democracy and Technology,

San Francisco

Gautam Hans is Policy Counsel and Director of CDT-SF, promoting CDT’s presence on the West Coast as a leader in technology policy and advocacy. His work focuses on digital civil liberties policy, outreach, and development. Gautam joined CDT in 2012 as the Ron Plesser Fellow, focusing on consumer privacy issues, including mobile technology, government regulation and enforcement, and the intersection of privacy and free speech. As the Plesser Fellow, he advocated CDT’s consumer privacy agenda in multistakeholder convenings, regulatory filings, conferences, and the press. Prior to joining CDT, Gautam interned at the FTC’s Bureau of Consumer Protection, the Electronic Privacy Information Center, the American Civil Liberties Union of Michigan, and the American Civil Liberties Union of Northern California. Gautam earned his B.A. in English and Comparative Literature from Columbia University, his J.D. from the University of Michigan Law School, and his M.S. in Information form the University of Michigan School of Information.

October 21 (Wednesday) – NO CLASS DUE TO FALL BREAK SCHEDULE October 22 (Thursday) – Tech Transfer and IP Licensing

Topics: Overview of university technology transfer; Intro to IP transactions; Key terms in IP licenses; Overview of types of IP transactions. Readings:

•University Licensing: an Introduction to Licensing Technology from Universities: http://www.fenwick.com/FenwickDocuments/university_licensing.pdf •Excerpt from Lifecycle of a Technology Company, pp. 121-140 (Canvas) •Sample Patent License (Canvas)

Lecture Videos:

•Patent Licensing http://www.youtube.com/watch?v=EPj0ydCGdiU •University Technology Transfer: http://www.youtube.com/watch?v=EZJ-OXcF6Hc


Patent License (CTools) Due October 21 10pm

Background Readings: •Excerpt from Intellectual Property Technology Transfer: Introduction to Technology Transfer, pp. 207-236 (Canvas)

October 28 (Wednesday) - IP in the Sharing Economy and Nontraditional IP Strategies Topics: What role does IP play in the “sharing economy?”; alternative ways to think about the role of IP for technology companies.

Readings: •Whitepaper – Branding in the Sharing Economy: Legal Implications for Intellectual Property & Consumer Outreach: http://www.collenip.com/whitepaper/Sharing_Economy_White_Paper.pdf •”Tesla Motors: Intellectual Property, Open Innovation, and the Carbon Crisis,” Dr. Matthew Rimmer, August 2014 (pages 1- 42 only): https://www.law.berkeley.edu/files/Tesla_Motors_IP_Open_Innovation_and_the_Carbon_Crisis_-_Matthew_Rimmer.pdf •Introducing the Innovator’s Patent Agreement: https://blog.twitter.com/2012/introducing-innovators-patent-agreement Background Readings: •”Elon Musk’s Patent Decision Reflects Three Strategic Truths,” Harvard Business Review, July 1, 2014: https://hbr.org/2014/07/elon-musks-patent-decision-reflects-three-strategic-truths

October 29 (Thursday) – Conflicts of Interest in Academic Research

Topics: What are the sources of regulation concerning conflicts of interest? What are the types of conflicts of interest that commonly emerge in academic research and innovation? How to navigate conflicts of interest in academic research and innovation?

Readings: •UM Overarching Principles: http://orsp.umich.edu/policies/um/coi/principles.html •Financial Conflicts of Interest in Research: An Academic Perspective (Canvas)

•Generally familiarize yourself with the Michigan State Conflict of Interest Statute: http://www.legislature.mi.gov/(S(ub3sukn0k3p1oftvfh4250dg))/documents/mcl/pdf/mcl-15-322.pdf

IV. OPERATIONS, PRODUCT DEVELOPMENT & GROWTH

The operations of a company shortly after formation will vary greatly depending on the nature of the company’s technology and other factors. Nonetheless, as a company begins operations (whether that includes launch of a mobile app or R&D related to a pharmaceutical product), new intellectual property issues begin to emerge, such as freedom to operate, trade secrets, and establishing an IP portfolio that provides a competitive advantage. As a company matures, its operations become more sophisticated as it begins to interact with third parties, perhaps becomes the target of anti-competitive behavior, and may potentially need to enforce its intellectual property. November 4 (Wednesday) - Introduction to Trade Secrets and Interacting with Third Parties

Topics: Intro to trade secrets; Implementing trade secret policies; Non-disclosure agreements; Employment issues and non-compete provisions. Required Readings: •Emerging Companies Guide: Trade Secrets, pp. 325-345 (Canvas) •Review the Sample Employee Offer Letter and Proprietary Information and Invention Assignment Agreement (Canvas) and identify the provisions that bear on trade secret issues. •Sample NDA (Canvas) Lecture Videos: •Overview of Trade Secrets http://www.youtube.com/watch?v=V9JPeyWtuyk&feature=youtu.be •Trade Secret Policies http://www.youtube.com/watch?v=0Q2ZCNb8EFM&feature=youtu.be •Enforcing Trade Secrets

http://www.youtube.com/watch?v=x_zQfFsgR8M •Disclosing Secrets Under NDA’s

http://www.youtube.com/watch?v=nAK__MqAR_U

•Hiring Personnel http://www.youtube.com/watch?v=MB19rtLQRps&feature=youtu.be

•Noncompete Agreements http://www.youtube.com/watch?v=Hf-‐6yWLozPk

•Obtaining Information Pursuant to NDA’s http://www.youtube.com/watch?v=WMPcx07VgHk&feature=youtu.be


Trade Secret Policy (CTools) Due November 3 at 10pm

Background Readings: • http://www.lawprofessor.org/resources/pdf/articles/jptos.pdf •http://www.fenwick.com/FenwickDocuments/Trade_Secrets_Protection.pdf

November 5 (Thursday) –Antitrust

Topics: Overview of antitrust issues for emerging technology companies; Role of DOJ and FTC in enforcing competition laws; Monopolization; Good drafting habits. Readings: •The Federal Trade Commission’s Guide to Antitrust Laws: http://www.aiag.org/staticcontent/files/antitrustlawsguide.pdf

Guest Lecturer – Nov. 5

Andrea Agathoklis

Murino

Goodwin Proctor,

Washington D.C.

Andrea Agathoklis Murino focuses her practice on a wide range of antitrust matters, including mergers and acquisitions, conduct investigations, counseling, and criminal and civil litigation. Andrea specializes in representing clients in investigations before the Department of Justice, the Federal Trade Commission, state attorneys general, and international competition law enforcement agencies. Andrea also provides advice to trade associations regarding compliance with antitrust laws and related matters.

Andrea previously served as Counsel to the Assistant Attorney General for Antitrust at the U.S. Department of Justice. While at the Antitrust Division, she advised the Assistant Attorney General and the Deputy Assistant Attorneys General on criminal and civil enforcement matters. From 2006 to 2009, Andrea served as an attorney advisor to former Chairman and Commissioner William E. Kovacic at the U.S. Federal Trade Commission, providing guidance on enforcement recommendations from the Bureau of Competition and the Bureau of Consumer Protection.

November 11 (Wednesday) - Copyright Freedom to Operate; Marketing Issues

Topics: Fair use; The Digital Millennium Copyright Act; Open Source Software; Right of Publicity Readings: •Kelly v. Arriba (Canvas) •Open-source Software: Use and Compliance (Canvas) •FTC Statement on Comparative Advertising: http://www.ftc.gov/bcp/policystmt/ad-compare.htm •The Right of Publicity: Why the Red-Headed Stepchild of the IP World Deserves a Second Look, http://www.honigman.com/media/site_files/137_Wassom_20Ipls_20Proceeding_20-_20Right_20of_20Publicity_20Sept_202009.pdf Background Readings: •Article on open source legal issues: http://www.cs.miami.edu/~burt/learning/Csc322.052/docs/opensourcedmk.pdf •Primer on False Advertising (Canvas) •Viacom v. Youtube Case (Canvas) •Rosetta Stone Case (Canvas)

Lecture Videos:

•Copyright Fair Use http://www.youtube.com/watch?v=Ow7fbTonS1g •Open Source Software http://www.youtube.com/watch?v=U3EUMWIlNYM •Reverse Engineering http://www.youtube.com/watch?v=CIJBB6Lq71E •Take Down Notices Under the DMCA • http://www.youtube.com/watch?v=cXeWGeEnOXs •Trademark Nominal and Fair Use http://www.youtube.com/watch?v=JaU7E1AeJI4 •Intermediate Trademark Uses http://www.youtube.com/watch?v=lviZnVMYc8k November 12 (Thursday) - Enforcement and Preparing for Litigation

Topics: Overview of patent litigation; Retaining litigation counsel; Pre-litigation communications; Avoiding problems with e-discovery Readings: •FAQs on Patent Litigation: http://www.fenwick.com/FenwickDocuments/Legal_FAQ_Patent_Litigation.pdf •Quinn Emanual: Responding to Patent Trolls (Canvas) Background Readings: • http://apps.americanbar.org/buslaw/newsletter/0055/materials/pp1.pdf

Video Links: •Enforcing Patent Rights

http://www.youtube.com/watch?v=B1m419HbXLQ •Obtaining Patent Litigation Counsel http://www.youtube.com/watch?v=mww3T8PCzH8


Patent Litigation Assignment (Canvas) Due November 11 at 10pm

Guest Lecturer – November 12

David

Donoghue

Holland & Knight

David Donoghue is a trial attorney and the deputy practice group leader of Holland & Knight’s Intellectual Property Group, focusing his almost 15 years of experience upon intellectual property litigation and particularly upon patent disputes. Mr. Donoghue’s most recent trial experience includes a jury verdict finding of willfulness, a full trebling of damages and a full award of attorney’s fees in the Northern District of Illinois. Mr. Donoghue previously served as in-house counsel with Delphi, the world’s larges automotive supplier, where he was a founding member of Delphi’s Technology Licensing and Litigation Group and handled substantial international intellectual property litigation and licensing matters. Mr. Donoghue has been named to The Best Lawyers in America, Patent Law, 2015-2016; Litigation – Patent, 2016; Illinois Super Lawyers magazine, 2014, 2015; Chicago’s Rising Stars: 40 Under 40, The National Law Journal, 2013, amongst other awards. Mr. Donoghue blogs at www.chicagoiplitigation.com.

November 18 (Wednesday) – Protecting Your User Experience; Thinking Strategically about Competitive Advantage

Topics: Protecting your user experience; leveraging all forms of IP to provide a competitive advantage in your target market. Readings: •Excerpt from The Business of Intellectual Property, Chapter 9 (Canvas) •World Intellectual Property Organization publication on Intellectual Property Strategies (Canvas) •Design and User Experience are the New IP: http://www.helloerik.com/design-and-user-experience-are-the-new-ip •Patent Skills for User Experience Design: http://www.designingforhumans.com/idsa/2012/12/patent-skills-for-user-experience-design.html

Take Home Assignment #10 Invention Mining (CTools) Due November 17 at 10pm

November 19 (Thursday) - Financing a Technology Startup Topics: Types of financing transactions; sources of financing for startups; dilution; securities laws governing startup financings; convertible debt and preferred stock financings. Readings:

•Primer on VC Math: http://antiventurecapital.com/raise-startup-capital/venture-capital-math/ •Everything You Wanted to Know About Convertible Seed Financings: http://techcrunch.com/2012/04/07/convertible-note-seed-financings/ Background Readings: •Financing a Company Blog Series: http://www.wolverine-startuplaw.com/2014/01/28/financing-a-startup-company-series-intro/ •Securities Laws for Startups: http://www.startuplawblog.com/2013/10/26/securities-law-101/

November 25 (Wednesday) – TBD November 26 (Thursday) – No Class: Thanksgiving Holiday.

Final Presentations

Details will be provided in class

Each Entrepreneurship Students will present an overview of their technology, their value proposition, and their IP strategy. Each Law Student will be assigned to at least one Entrepreneurship Student and will attend the presentation from the perspective of a potential investor. Students will sign up for a 20-minute slot during one of the following times.

•Monday, November 30, 7:30-10pm •Wednesday, December 2, 8:30-10pm

December 3 (Wednesday) – IP Monetization

Topics: How to derive value from IP beyond providing exclusivity for your goods or services; IP licensing programs; patent auctions; valuing patents being acquired or licensed; corporate IP incubators.

Readings:

•CNET Article On Intellectual Ventures: http://www.cnet.com/news/inside-intellectual-ventures-the-most-hated-company-in-tech/ •Patent Auctions: How Far Have We Come? http://www.analysisgroup.com/uploadedfiles/content/insights/publishing/jarosz_patent_auctions_how_far_have_we_come.pdf •IP as Venture Capital: A Case Study of Microsoft IP Ventures (Canvas)

VI. EXITS AND DUE DILIGENCE The goal of most technology startups is to obtain funding and experience an exit, such as an acquisition or an initial public offering. Most sophisticated investors and purchasers will engage in significant due diligence of a startup prior to investing or purchasing. The intellectual property position of the company will be one of the primary focuses of the due diligence investigations. At the very least, an investor or purchaser will want to see: (i) the company’s intellectual property assets and confirmation that the company owns those assets; (ii) that the company has an understanding of its freedom to operate with respect to its primary competitors; and (iii) the strategic value of the company’s intellectual property and whether it provides a sufficient competitive advantage. December 4 (Thursday) – Exits / Due Diligence

Topics: Being prepared for due diligence; What to expect from due diligence. Readings: •Demystifying IP Due Diligence, http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=3af2e1b1-aa4f-47fa-bf5c-6429a5171f55 Background Readings: •IP Due Diligence in Business Transaction Setting, http://www.bakerbotts.com/infocenter/publications/detail.aspx?id=26c677f4-ee83-4c85-9291-456463759a89 •Staying Attractive, http://www.mofo.co.il/Media/Doc/2012%20M&A%20seminar/Staying%20Attractive%20(Gal).pdf

11:59pm – Friday, December 11 Final Written Project Due for Entrepreneurship Students


11:59pm – Wednesday, Dec. 22 Final Written Project Due for Law Students
