An outline of what to consider when you are starting up an intellectual property based business.

1. How to Handle a New Client’s Start Up Intellectual Property Business from a practical standpoint By Laurie S. Young & Royee Vlodaver

2. Royee Vlodaver – 2006 Mitchell Grad Vlodaver Law Offices, LLC www.vlodlaw.com Target Mid-Size Solo/Small Laurie Young – 2007 Mitchell Grad Nikolai & Mersereau, P.A. AEIOMed, Inc. Backgrounds

3. A new client wants to start a business What is a new company Construction Serviced Based Home care Food supply Professional Services Retail Invention Based So a Client Calls You…

5. Explain why the client needs a different attorney for IP protection

6. Ask Basic Questions:

7. Ask about the invention

8. When did you come up with the idea?

9. Have you told anyone about this invention?

10. Ask basic questions you can fill in and properly introduce client to IP attorneyThe Client Says They Have Invented Something…

11. Explain what IP is: Patent vs Trademark vs Copyright If invented something, must ask the client: When did you come up with the concept Can you explain, in sufficient detail, how to make and use the invention Does anyone else know about this concept? Have you offered it for sale, sold it, or entered into potential licensing agreements? Who helped you come up with this concept? Sending Your Client to IP Attorney…

12. Very important for your client to understand the statutory bars to patenting, many do not know about this Explain absolute novelty if interested in patenting outside of US Explain importance of patenting outside US If invented the idea more than 1 year ago ask about experimental uses Explaining the Patenting Process…

13. Provisional 1 year lifetime Recommended only for inventors who need to raise capital to file a patent Tradeshow exception Non-Provisional Explain 20 year lifetime First Office Action typically 2 years from filing date Average time to dispose application 3 years Explain Provisional vs Non-Provisional Patents Applications

14. Just because you file a patent application does not mean you have a patent Explain to client he/she will most often receive a first office action rejection Most often will receive 2nd office action rejection Typical to go through many iterations* Explain Patent Application Process…

15. Business names, product names, service titles Actual Use State Registrations vs Federal Registrations State registration Only used in 1 state (i.e. Minnesota) Federal Registration Using name in more than 1 state or between the US and foreign country Trademarking the product/business name

17. Always make your client aware of the international classifications

18. USPTO first office action between 3 and 6 months

19. Examining attorney does not contest registration, typically 8 month – 1 year for registration

20. Prior to registration – publication, opposition periodTrademark filing process…

21. What is their business model/intent? Selling? Keeping in-house? Licensing? After the client gets their IP taken care of…

22. What types of corporations LLC S-Corp LLP LLC Articles of organization By-laws Member control agreements First written action Supplemental documents Setting up a business…

23. Confidentiality/Non-Disclosure Agreements When By whom Follow-up Serious Negotiations Tracking who knows IP If selling widget outright…

24. Licensing agreements Go back to IP counsel for proper drafting Employment issues* Non-inventor: employee issues Inventor: employee issues Always have NDAs in place! If not selling outright…

25. Careful of vendors, manufacturers (especially foreign manufacturers) Leases of property If building in leased facility If Manufacturing…

26. Non-scientists Great with business/marketing plans No knowledge of laws and regulations If service-based client…

27. Understands need for incorporating Has a business name what happens next What markets Infringement of name Website name Acting as counselor Starting with the business name…

28. Your Questions…

29. Laurie S. Young 900 Second Ave. South, Suite 820 Minneapolis, MN 55419 612-392-7309 Laurie.young@nm-iplaw.com Vlodaver Law Offices, LLC Royee Vlodaver 6 Edgcumbe Place St. Paul, Minnesota 55116 651-690-9906 royeev@vlodlaw.com