This document discusses intellectual property law considerations for startups and emerging companies. It outlines the main types of intellectual property - patents, trademarks, and copyrights. Patents protect inventions, trademarks protect brands and logos, and copyrights protect original creative works. The document provides strategies for startups to strategically leverage these different types of intellectual property protection and also warns of common traps to avoid, such as premature disclosure of inventions or improper trademark use.

1. IP LAW FOR STARTUPS
AND EMERGING
COMPANIES
WeWork Charging Bull  May 14, 2014www.boagip.com

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Rights given to persons over
the creations of their minds.
-WIPO
Intellectual Property

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Intellectual Property
A bundle of rights granted
for a new, creative or
distinctive idea or
expression.

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Policy Justification
 Net Social Welfare Theory
 Natural Right Theory
Determination that some
social good comes from
awarding exclusive rights
to inventors and authors.

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THE BIG THREE

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The Big Three: Patent
The right to exclude others
from making, using, selling, or
importing the invention
described in the patent’s
claims.
Not a right to practice.

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The Big Three: Trademark
A symbol that identifies and
distinguishes the source of
the goods of one party from
those of others.

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The Big Three: Copyright
The exclusive right of an
author to exploit a
work, including making
copies, publicly performing
the work, and preparing
derivative works.

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Comparison
Patent Trademark Copyright
Term
20 years
from
(effective)
filing
Indefinite
(Use)
Life of the
author + 70*
Rights
Vest
Issuance
Use in
commerce
Fixation
Cost
High
$5,000-
Low
<$1,000
Very Low
<$300

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The Theory of Everything
Patent Trademark Copyright
Criteria
Utility, novelty, non-
obviousness
Distinctive, capable of
being an indicator of
source, no LOC
Originality and fixation
Coverage
Inventions or discoveries of
any new process, machine,
manufacture, or
composition of matter
Symbols used in
commerce that indicate
a source of origin
Original works of
authorship
Exclusions
Laws of nature, physical
phenomena, abstract ideas
Scandalous or
disparaging subject
matter; functional marks
Ideas, functional aspects,
gov’t works
Infringeme
nt
Making, using, selling,
offering for sale, or
importing anything covered
by a claim
Likelihood of confusion
Copying and substantial
similarity

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Playing The Patent Game
 302,948 patents issues in
2013
 40,000 “software patents”
 4,701 patent infringement
suits filed in 2012
 62% brought by NPEs
 $29B in direct costs
RPX Corporation

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Patents and Startups—
Considerations
 pique investor interest
 tangibilization
 protects early market share
(fear)
 BUT: expensive and may not be
worth it

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Trademarks and Startups—
Considerations
 branding: protects business
identity
 national rights
 puts others on notice
 BUT: requires care and feeding

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STRATEGY

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Strategy I: Patents
 Identify patent-worthy inventions
 Core to business?
 Alternatives available?
 Aim for not just any patent, but a
valuable one
 Too specific, not valuable
 Too broad, invalid

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Strategy II: Patents
 File early
 Statutory deadlines
 First to file
 File continuations and adapt

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Strategy III: Trademarks
 Confirm availability early
 Be distinctive
 Take care of it:
 Use it correctly (adjective)
 Protect it
 ™ and ®

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Strategy IV: Copyrights
 Register important materials
 source code, web site
 Statutory damages
 Registration required for
infringement claim

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Strategy V: Design Patents
 Ornamental
 Inexpensive and fast
 E.g., shoe
design, smartphone, GUI, icon
 Infringer’s profits

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TRAPS

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Trap 1: Premature Disclosure
Must file within one year of your first public disclosure!
Many foreign jurisdictions require “absolute
novelty.”

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Trap 2: Casual Inventorship
By default, an employee owns work done within
the scope of employment!
Use employment agreements.

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Trap 3: Freedom to Operate
Avoid infringement of the rights of others.
Confirm FTO before getting started.

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Trap 4: Bad Trademark Use
Use your trademarks properly and consistently.
Non-use or generic use can be deadly.

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Trap 5: © Fair Use Isn’t Always
“Fair”
Limited use for commentary, criticism, parody
Look at purpose, nature, amount, impact

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Questions?