ip crash course for ip crash course for mobile startups:mobile startups:

a practical approacha practical approach

ernest grumblesernest grumbles

adams monahan llpadams monahan llp

9.20.20119.20.2011

start with hardwarestart with hardware

then the software…then the software…

how about interface how about interface design…design…

or interface functionality or interface functionality (Apple multi-touch patent (Apple multi-touch patent

app…)app…)

a method of location-based a method of location-based messagingmessaging(MS patent)(MS patent)

brands….brands….

what is ip?what is ip?

ip typesip types

patentpatenttrade secrettrade secrettrademarktrademarkcopyrightcopyright

9 things about patents9 things about patents

patents-#1 patents-#1 what?what?

exclude exclude othersothers from use of an from use of an invention. invention.

reward inventors for a reward inventors for a limitedlimited period period

all countries have patent all countries have patent systemssystems

patents-#2 patents-#2 why?why?

market exclusivity strategic tool against competitors licensing revenue streams build value in business – “patent

pending” set up company for investment,

acquisition

patents-#3 patents-#3 examplesexamples

patents-#4 patents-#4 processprocess

identify inventions maintain secrecy gather information and prepare

an application file with the pto hang on the wall

patents-#5patents-#5time to gettime to get

18 months to 5 years from filing of application.

length varies by technology software patents – up to 5 years

Claims may never issue.

patents-#6 patents-#6 costcost

$500 to $5000 for provisional application

$4000-$18,000 for non-provisional application

depends on technology, business goals and timing

patents-#7 patents-#7 durationduration

20 years from filing once it dies, it’s dead but:

continuation-in-part applications

patents-#8 patents-#8 enforcement/defenseenforcement/defense

search before new tech release patent litigation ain’t cheap $3 million in fees/costs would be a

good deal for an active case cases can last 2-5 years

patents-#9 patents-#9 best practicesbest practices

do you know your IP? does the company own the ip?? what tech drives revenue?

patents-#9…. patents-#9…. best practicesbest practices

confidentiality provisional = quick “patent

pending” periodically review R&D

The The Mobile Mobile Patent Patent Wars Wars 20112011

$12.5 Billion$12.5 Billion

philosophical philosophical interlude:interlude:

choose one - choose one - * patents rock!* patents rock!

* patents s-ck!* patents s-ck!

9 things about trade 9 things about trade secretssecrets

trade secrets-#1 trade secrets-#1 what?what?

confidential information that has value from not being generally known

has protection only as long as secret kept – like the Coke formula

protected by statute (like Uniform Trade Secrets Act) and contract

trade secrets-#2 trade secrets-#2 why?why?

build value in business – proprietary formulas/processes

preserve market advantage keep secret forever – can’t with

patents preserve patentability of inventions

trade secrets-#3 trade secrets-#3 examplesexamples

MARKET PLANS, FINANCIALS, SUPPLIER LISTS, CUSTOMER LISTS

trade secrets-#4 trade secrets-#4 processprocess

maintain secrecy of data identify inventions control access consider a log

trade secrets-#5 trade secrets-#5 time to gettime to get

you own as soon as you create

no formal filing process

trade secrets-#6 trade secrets-#6 costcost

cost of development cost of maintaining secrecy

trade secrets-#7 trade secrets-#7 durationduration

perpetual – if it can be maintained as such

coke formula the rabbit has to stay in the hat

trade secrets-#8 trade secrets-#8 enforcement/defenseenforcement/defense

when to sue? complex litigation often bundled with employee-

related disputes (coke-pepsi) injunctions…! costs - $400k-$3 million

trade secrets-#9 trade secrets-#9 best practicesbest practices

confidentiality policies (“CP’s”) use NDA’s when possible mark “confidential” materials as

such protect sensitive materials (or

facilities)

9 things about trademarks9 things about trademarks

trademarks-#1 trademarks-#1 whatwhat

exclusive use of brand for specified goods or services

rights based on use in the marketplace U.S. federal and state level (statutes

and common law)

all countries have trademark systems

trademarks-#2 trademarks-#2 whywhy

market exclusivity for brands – unique association

promote customer loyalty (TONY THE TIGER)

prevent customer confusion strategic tool against competitors build value in business – ®

trademarks-#3 trademarks-#3 examplesexamples

word mark: EXXON stylized word mark: design mark: TONY THE TIGER color: yellow for sticky note pads

(“Post-Its”) product shape: the Coke bottle

trademarks-#4 trademarks-#4 processprocess

identify brands (incl. future brands) evaluate market

significance/strength of mark search! federal v. state file application prosecute to registration

trademarks-#5 trademarks-#5 time to gettime to get

common law – rights upon use federal registration process -

can take 18 months state registrations – much

quicker

trademarks-#6 trademarks-#6 costcost

trademark search - ~$700 U.S. tm app. - ~$1000 (single class). up to $2K in additional prosecution

costs state tm’s – much cheaper foreign applications - generally more

trademarks-#7 trademarks-#7 durationduration

perpetual??? registrations indefinitely renewable STELLA ARTOIS – claims rights back

to 1366 when marks die – ASPIRIN, ZIPPER,

DRY ICE, ESCALATOR (generic terms)

trademarks-#8 trademarks-#8 enforcement/defenseenforcement/defense

sue for likelihood of confusion (similar mark on similar goods)

trademark litigation ~$400K-$2M.

most disputes settled cases can last 1-3 years.

trademarks-#9 trademarks-#9 best practicesbest practices

communicate with marketing/product teams on brands

search before you sell! prioritize revenue-driver brands

trademarks-#9 trademarks-#9 best practicesbest practices

file Intent to Use (ITU) applications for quick protection

maintain uniformity of use enforce rights

copyrightscopyrights

protects protects writings/images/soundswritings/images/sounds

inexpensive to registerinexpensive to register protection lasts over 100 protection lasts over 100

yearsyears

copyrights, cont….copyrights, cont….

register soon after public register soon after public releaserelease

protected by U.S. statutesprotected by U.S. statutes good for company code, good for company code,

manuals, imagesmanuals, images litigation – not cheaplitigation – not cheap

copyrights: best practicescopyrights: best practices

use stuff you own or have use stuff you own or have licensed (incl. creative licensed (incl. creative commons)commons)

make sure you own stuff you’re make sure you own stuff you’re paying for – images, code, paying for – images, code, narrative (agreements!)narrative (agreements!)

use Copyright Office process for use Copyright Office process for source code registrationsource code registration

the endthe end

egrumbles@adamsmonahan.com

www.ernestgrumbles.comwww.ernestgrumbles.com

651.491.3643651.491.3643