Upload
mars-discovery-district
View
2.352
Download
2
Embed Size (px)
DESCRIPTION
Intellectual property (IP) is the lifeblood of every knowledge-based start-up or venture. Learn how to identify and manage your intellectual property in a strategic way and examine how it fits in with your overall business model. A large part of your competitive advantage depends on your ability to protect and properly exploit or commercialize your product or service innovations. IP law provides the framework for protecting and commercializing these innovations.
Citation preview
MaRS Discovery District Entrepreneurship 101
Wednesday January 18, 2012
ARSHIA TABRIZI
B.A.Sc. Computer Engineering (Hon) (UofT) Juris Doctor (Law) (UofT)
Member of Ontario & California Bars
www.tabrizilaw.com [email protected]
Copyright 2012 Tabrizi Law Office PC
¡ 1990-‐1995 – UofT software/hardware engineering, IBM ¡ 1995-‐1998 – joined the “dark side” – UofT law school ¡ 1998 – back to “the force” – thesis on “University Spin-‐offs” ¡ 1999-‐2001 – Wilson Sonsini Goodrich & Rosati PC (Palo Alto,
Silicon Valley) – incorporated Google, IPO’d Apple, 800+ lawyers ¡ 2002 – Tabrizi Law Office -‐ full-‐service/exclusive start-‐up practice
§ Incorporation, Financing, IP, Trademark, Patents, Licensing, Web § Strategic Partner with Clients – equity, relationships, 3-‐4/year
¡ Client list § NeXJ Systems (founded by William Tatham, previously founder of
Janna Systems, acquired by Siebel for $1.7 b.) § RedFlagDeals.com (acquired by Yellow Pages Group) § WedSnap Inc. (acquired by The Knot Inc.) § MMB Research (smart-‐energy platform, $1 m. angel round) § CognoVision (acquired by Intel)
Copyright 2012 Tabrizi Law Office PC
¡ NOT to become IP lawyers § Your job is to build companies
¡ NOT to learn how to file a patent § Patent agent
¡ NOT to learn how to file a trademark § Trademark agent
¡ NOT to learn how to file a copyright § Copyright office
Copyright 2012 Tabrizi Law Office PC
¡ To learn 3 things: 1. What is the big deal with IP? 2. Why should you care about IP? 3. What do you do about IP?
Copyright 2012 Tabrizi Law Office PC
¡ Billions of dollars are at stake: § Google acquisition of Motorola Mobility $12b. § Apple using patents against Android § Auction for Nortel patents § i4i $240 m. against Microsoft § BlackBerry loses BBX -‐ even BBM? § Winkelvoss twins against Facebook
Copyright 2012 Tabrizi Law Office PC
¡ I read about it in Steve Jobs biography § Steve Jobs had dozens of patents § Apple lost copyright case on Windows ▪ Apple got GUI from Xerox PARC
§ Steve Jobs negotiated music rights § Steve Jobs was secretive & controlling ▪ NOT lean start-‐up methodology
Copyright 2012 Tabrizi Law Office PC
¡ 3 reasons why IP is a big deal: 1. IP is a legal fortress ▪ IP protects your valuable assets
2. IP is a sword & shield § IP attacks/defends against competitors
3. IP is a money-‐making tool ▪ IP monetizes your business assets
Copyright 2012 Tabrizi Law Office PC
¡ IP is a legal fortress § Collect your assets ▪ Employment agreements – patents ▪ Consulting agreements – copyright
§ Protect your assets ▪ Invention – file a patent, trade secret ▪ Brand – file a trademark
Copyright 2012 Tabrizi Law Office PC
¡ IP is a legal fortress § Kinds of assets ▪ Ideas ▪ Business plans ▪ Inventions ▪ Names, brands ▪ Software ▪ Designs
Copyright 2012 Tabrizi Law Office PC
¡ IP is a sword & shield ¡ Patents
§ Invention ▪ New, non-‐obvious, utility
§ 20 year monopoly § First-‐to-‐file system ▪ Not who invented first ▪ No good-‐guy defence
Copyright 2012 Tabrizi Law Office PC
¡ Patents as Swords § Offensive strategy § Sue competitors ▪ You are stepping on my turf -‐ stop or pay up
§ i4i v Microsoft ▪ $4-‐5k to file, $15-‐20k+ to register ▪ $1m+ to enforce a patent ▪ Public, venture $$$, contingency
Copyright 2012 Tabrizi Law Office PC
¡ Patents as Shields § Defensive strategy § Free to practice invention § Deterrent -‐ counter-‐sue competitors § Google acquisition of Motorola ▪ Globe & Mail -‐ http://bit.ly/q4CpQy
Copyright 2012 Tabrizi Law Office PC
¡ Patents v Innovation § Patents equal innovation § Patents kill innovation
¡ Question § How much innovation could Google have produced if it had spent $12b on product development instead of Motorola’s patents?
Copyright 2012 Tabrizi Law Office PC
¡ Trademarks as Shields § Ensure you are free to use ▪ Corporate registration not enough
§ Protect brands before investing ▪ Avoid RIM’s problems with BBX/BBM
§ Filing fees are affordable § Short process ~ 6-‐12 months
Copyright 2012 Tabrizi Law Office PC
¡ Trade Secrets as Swords § “Secret sauce” § “Confidential” ▪ Source code, algorithm, chemical formulation, business plan, customer or vendor list, pricing list
§ Non-‐disclosure agreements ▪ Limit use – only to evaluate our product ▪ Limit disclosure – only to employees
§ Sue if they exceed limited rights
Copyright 2012 Tabrizi Law Office PC
¡ IP is a money-‐making tool § Patent licensing ▪ Microsoft patents for Android mobile devices ▪ Hardware IP licensing (IP cores) ▪ Materials, biotech start-‐ups
§ Copyright licensing ▪ Foundation of software industry ▪ Music licensing (e.g. iTunes)
§ Trademark licensing ▪ Merchandise (e.g. Star Wars)
Copyright 2012 Tabrizi Law Office PC
¡ IP is a Business Tool § IP is not the goal § IP is a means to an end § IP is in service of business objectives § IP works with other business tools § IP is a part of your business strategy ▪ How do make money? ▪ How do maintain competitive advantage?
Copyright 2012 Tabrizi Law Office PC
¡ Angel investor § Patents – purpose (sword, shield) ▪ How does it fit with business strategy
§ Digital media start-‐up ▪ Trademark – logo, brand ▪ Copyright – content, software ▪ Patents – sometimes
§ Inventive technology ▪ Patents, trade secret
Copyright 2012 Tabrizi Law Office PC
¡ List core business assets § List intangible assets § What is my business? ▪ Prioritize the assets
§ IP/start-‐up advice § Strategic IP plan ▪ Customize ▪ Prioritize ▪ Timeline ▪ Budget ▪ Review
Copyright 2012 Tabrizi Law Office PC
¡ Tabrizi Law Office P.C. § www.tabrizilaw.com § arshia_tabrizi § [email protected] § 416.510.2600 x.306
Copyright 2012 Tabrizi Law Office PC