Harlem Biospace Seminar: Protecting Your Assets Jen Berrent

Todd Anderman

February 3, 2014 Attorney Advertising

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Protecting Your Assets

Topics How do I make sure I own the IP?

Do I need agreements with founders?

What agreements do I need with employees, consultants and advisors?

How important are confidentiality agreements?

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How do I make sure I own the IP?

By contract! Licenses

Assignment of inventions

Confidentiality

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Do I need agreements with founders?

Founders sign agreements to make sure the company is separate from the individuals so that it can incentivize founders but survive a departure Invention, Non-Disclosure, Non-Competition and Non-

Solicitation Agreement – Founder Services Agreement (non-employee founders)

Restricted Stock Agreement – For “founder stock”

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What agreements do I need with employees, consultants and advisors?

Sign agreements covering: Services to be provided

Term of engagement

Restrictive covenants

Ownership of inventions

Confidentiality

Grant and vesting of equity

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What agreements do I need with employees, consultants and advisors?

Services and Other Terms Employees

– Offer Letter

– Invention and Non-Disclosure Agreement

– Non-Competition and Non-Solicitation Agreement

Consultants – Consulting Agreement

Advisors – Advisory Board Letter

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What agreements do I need with employees, consultants and advisors? Equity Employees

– Restricted Stock Agreement (executives only) – Stock Option Agreement (incentive or non-statutory)

Consultants – Non-statutory Stock Option Agreements (individuals only) – Warrants (entities)

Advisors – Non-statutory Stock Option Agreements

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Wilmer Cutler Pickering Hale and Dorr LLP is a Delaware limited liability partnership. WilmerHale principal law offices: 60 State Street, Boston, Massachusetts 02109, +1 617 526 6000; 1875 Pennsylvania Avenue, NW, Washington, DC 20006, +1 202 663 6000. Our United Kingdom offices are operated under a separate Delaware limited liability partnership of solicitors and registered foreign lawyers authorized and regulated by the Solicitors Regulation Authority (SRA No. 287488). Our professional rules can be found at www.sra.org.uk/solicitors/code-of-conduct.page. A list of partners and their professional qualifications is available for inspection at our UK offices. In Beijing, we are registered to operate as a Foreign Law Firm Representative Office. This material is for general informational purposes only and does not represent our advice as to any particular set of facts; nor does it represent any undertaking to keep recipients advised of all legal developments. Prior results do not guarantee a similar outcome. © 2014 Wilmer Cutler Pickering Hale and Dorr LLP