protecting innovation intellectual property strategies for the inventors, startups and more

Protecting Innovation: Intellectual Property Strategies for the

Inventors, Startups, and More …

About Your Speaker

Andrew L. Eisenberg- Partner - Lee & Hayes, PLLC- Former General Counsel – Audiotoinq, Inc. - Registered Patent Attorney with the USPTO- Named Inventor on 3 Issued Patents

- University of Michigan – B.S.E - University of Notre Dame – J.D.

@andreweisenberg

P 512.456.5140 | C 248.895.584011501 Alterra Parkway, Suite 450 | Austin, Texas 78758

Why IP is Important

S&P 500 S&P 500

1970

Intangible

Today

Intangible

Tangible

Tangible


-Trademarks

-Copyrights

-Patents

What is IP


-Identifier in Commerce - Characters, Symbols, Words, Phrases,

Slogans, Images, Design elements, Sounds, Scents, Shapes

-Geographic limits

-Types of Goods or Services

Trademark – Basics


- Company Name and Logo

- Product Names

- Branding

- Packaging / Product

What to Trademark


- Trademark Search - (USPTO.gov)- Google

- Domain Name

- Graphic Designs

Trademarks - Tips


- Instantaneous and Automatic

- Creative Expression v. Factual Content and Ideas

- Term 150 or Life + 75 - Registration (copyright.gov)

- Statutory Damages

Copyright – Basics


- Copying

- Distributing - Reproduction/Performance

- Re-transmission

- Display

- Derivative Works

Copyright – Infringement


Copyright – Tips

- Don’t cut and past images onto your website

- IP agreements with your creative contractors and employees

- includes your logo designer


- Patents – Inventor

- Copyright – Creators

- Trademark – Creators and/or Registrants

- Physical Property – Depends

When to File - TrademarksPatent - Basics

- New, Useful, and Non-Obvious

- Must File – 1 year after Public Disclosure

- Term is 20 years from Filing Date






When to File - TrademarksPatent - Tips

- Don’t need a prototype or working model

- Keep applications pending

- Two applications are typically worth more than double what a single patent






When to File - TrademarksProvisional Patents

- Pros- Reduced filing fees- Can edit application

- Still in development - Secures filing date- Reduced requirements- Never published if abandoned

- Cons- Never issues as a patent- Starts timer on non-provisional (regular filing)

- One year- Only protects to extent subject matter is described- Material changes can cause loss of filing date


What Else Do I Need …

A person who has just an idea but they don’t have the ability to take it to the next level so they want to take it to big companies and see if they are interested. They want to protect themselves with a provisional or full patent.A person who has a working prototype but is afraid to approach people about it because they think they may steal their idea.They have a software or some other intangible invention or idea and they are afraid someone will copy and steal it.They have concept about food or something related to food that they want to protect.

Employment/Contractor Agreements

- Status (Employee/Independent Contractor)

- Position/Responsibilities - Compensation

- Termination

- Tax Withholdings





When to File - Copyrights





When to File - Trademarks

- IP should be informed by the business plan from an early stage- Why do I want IP (what purpose does each asset

provide)- Potential Buyers- Investment/Credit

- Does my IP support my product and branding- Future Growth - Good Will - Protection

- Can I earn a ROI- Vertical License- Merchandising

- Funded as part of the project

IP and Business Plans












- Credit Lines - Typically based on all tangible and intangible assets

- Most banks give no credit for IP- Techniques and companies exist that can value IP

- Portfolios (e.g., 2 more assets) are more valuable than a single asset

- Insurance in some cases can be obtained when the IP is valued - Bank may then increase credit lines or issue loans based on the insurance value

- Valuation - IP can be used to increase the valuation for a equity round

when taking on investors

Funding – Valuation





- Termination

- Tax Withholdings











- Sale of Company- Buyer may require patents - Increased valuation

- Sale of Assets - IP can be packaged, valued, and infringers identified - The IP may then be sold (Non Practicing Entities,

Aggregators or Companies, or at Auction)

Exit Events


- NDA (may be separate) - Proprietary Information

- Specialized training

-Third party information

Nondisclosure




- Termination

- Tax Withholdings











- I have an idea but need investors support for the next step

- I have an idea but need a prototype built or help in finalizing the commercial design

Examples





Nondisclosure




- Termination

- Tax Withholdings











- I have a prototype but need investors support for the next step

- I have a product that is ready to sell

Examples


- Tangible (Company property)- Laptops, pagers, cell phones, corporate credit cards, keys

and/or access cards.

- Intangible - Drawings, notes, memoranda, specifications, devices,

formulas, and documents

- All copies

- Third Party Information or Proprietary Information

- Inspection - Property situated on the Company’s premises and owned,

leased, or licensed by the Company.

Return of Company Property




Nondisclosure




- Termination

- Tax Withholdings











- I have developed software with a special algorithm or formula

- My partner filed a patent on an idea we jointly conceived of

Examples Continued






- All copies








Nondisclosure




- Termination

- Tax Withholdings











- Someone else filed for a trademark on my company or product name

- I have creative designs for clothing or furniture

Examples Continued






- All copies








Nondisclosure




- Termination

- Tax Withholdings











- Someone copied my code

- I have a novel food product

Examples Continued


Questions?


Learn More

Title: Trademarks What, When, Where, and Why Date and Location: February 25 6:30pm - Lee & Hayes Domain 7 11501 Alterra Parkway, Suite 450 Austin, Texas 78758Summery: Andrew will cover the basics of trademark law: what to know before filing, how trademarks work, and what your responsibilities are once your trademark issues. Following the basics, we will cover untraditional uses of trademarks, use of trademarks to enhance marketing campaigns, and ideas for monetizing trademarks.

Title: Intellectual Property and Startups – Gold or Fool’s GoldDate and Location: July 2015 – Bellagio Las VegasSummery: Andrew will discuss the pros and cons of planning, obtaining, and maintaining intellectual property as it relates to both high and low tech startups. We will also discuss the benefits and tradeoffs associated with allocating hard earned investment dollars towards IP opposed to other growing business needs. During the conversation, Andrew will propose several models for structuring a startup's intellectual property and lead a discussion relating the different models to different industries.

Title: First Looks Forum and First Success - How to Use Crowdfunding in TexasDate and Location: February 17 5:30pm – 7600 Brunet Rd # 130 Austin TX 78757Summery: The presentation is by Hall Martin, the Founder and CEO of the Texas Entrepreneur Network. He leads the largest crowdfunding portal in the state of Texas called the TEN Funding Portal. His funding programs have raised over $141M for startups. He also serves as the Vice-Chair of the Baylor Angel Network and the Director of the Wilco Angel Network. Join us online or in person for 30 minutes of key information if you plan to use crowdfunding.


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