Intellectual Property for Technology Startups - Entrepreneurship 101

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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.

Text of Intellectual Property for Technology Startups - Entrepreneurship 101

  • 1. 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

2. 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-os 1999-2001 Wilson Sonsini Goodrich & Rosati PC (Palo Alto, Silicon Valley) incorporated Google, IPOd Apple, 800+ lawyers 2002 Tabrizi Law Oce - 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 3. NOT to become IP lawyers Your job is to build companies NOT to learn how to le a patent Patent agent NOT to learn how to le a trademark Trademark agent NOT to learn how to le a copyright Copyright oce Copyright 2012 Tabrizi Law Office PC 4. 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 5. 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 6. 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 7. 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 8. IP is a legal fortress Collect your assets Employment agreements patents Consulting agreements copyright Protect your assets Invention le a patent, trade secret Brand le a trademark Copyright 2012 Tabrizi Law Office PC 9. IP is a legal fortress Kinds of assets Ideas Business plans Inventions Names, brands Software Designs Copyright 2012 Tabrizi Law Office PC 10. IP is a sword & shield Patents Invention New, non-obvious, utility 20 year monopoly First-to-le system Not who invented rst No good-guy defence Copyright 2012 Tabrizi Law Office PC 11. Patents as Swords Oensive strategy Sue competitors You are stepping on my turf - stop or pay up i4i v Microsoft $4-5k to le, $15-20k+ to register $1m+ to enforce a patent Public, venture $$$, contingency Copyright 2012 Tabrizi Law Office PC 12. 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 13. 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 Motorolas patents? Copyright 2012 Tabrizi Law Office PC 14. Trademarks as Shields Ensure you are free to use Corporate registration not enough Protect brands before investing Avoid RIMs problems with BBX/BBM Filing fees are aordable Short process ~ 6-12 months Copyright 2012 Tabrizi Law Office PC 15. Trade Secrets as Swords Secret sauce Condential 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 16. 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 17. 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 18. Angel investor Patents purpose (sword, shield) How does it t 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 19. 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 20. Tabrizi Law Oce P.C. www.tabrizilaw.com arshia_tabrizi [email protected] 416.510.2600 x.306 Copyright 2012 Tabrizi Law Office PC