Leverage Your IP Assets

Leverage Your Assets

Melissa Jaffe Mary Juetten

Presented by

Entrepreneurs’ World

Innovation Capture is Hard

Got Intellectual Property?Why Care…

• IP theft costs US companies $250 billion annually• 100% of all companies have IP• 700K new startups annually vs. 20% protected IP after 1st year• IP is most valuable asset > 90% and not on your Balance Sheet• Exclude competition; Attract investment (incl. crowdfunding); Leverage & license• Avoid IP loss, infringement, or business failureDisclaimer: This is intended to be general information. Nothing in this presentation constitutes legal advice. Please consult with an attorney before making any intellectual property protection decisions.

What is IP?

• Patents (utility & design)• Copyright ©• Trademark/Service mark TM SM ®• Trade secrets – unsung heroes

NO legal advice provided!

IP Misconceptions

• IP is just for Tech Startups or Tech companies & Patents are the only IP for inventors.

• Trade secrets are the easiest to protect because there is no registration.

• You can copy anything without a copyright ©

• You can copyright an idea.

• Domain = TM

• If I pay for it, I own it.

• Patents means right to make or sell.

WHO: IP Ownership Challenges

• Multiple Inventors• Who you are? Employee of another company• Proper Assignment of IP Rights – personal versus company• Assume that Ownership automatically extends outside the US

• Idea• URL• Name• Know how• Employees• Contractors

Startup Info

Strategies to Protect IP

• Do it Yourself:– USPTO.gov– Copyright.gov

• Hire a Professional:– Attorney, Consultant, Legal Zoom, Rocket Lawyer

• Secrets:– Notary, IP Vault, Copyright software

Ignorance is NOT a Defense

Be Careful:

Video CopyImagesMusic

READ READ READ

Read License & Permission to Use

Leveraging IP

The lifecycle of contracts regarding Intellectual Property (IP) between businesses.

Business + IP

© 2014 Law Offices of Melissa B. Jaffe, PC

Licensing:

Leveraging IP

BUSINESS:

“Someone Doing Something For Someone Else In Exchange for Something”

Facebook: Tao of Business Law


Leveraging IP

ARE YOU IN BUSINESS?

- Commitment- Finances- Goals/ Exit Strategy


Leveraging IP

Business Mistake #1: Failure to incorporate

Major benefit = Limitation on liability


Leveraging IP

Business Mistake #2:

Improper entity

- How many people are joining together?

- Are appropriate documents drafted & filed (i.e. Buy-Sell Agreement; Operating Agreement, etc.)


Leveraging IP


Improper entity & failure to register with state and local authorities

- Default = Partnership- LLC = typically the most flexible- (C) corporation often most restrictive


Leveraging IP


**S-L-O-W D-O-W-N**

- Brainstorm potential markets and uses

- Be honest with your emotional and energetic commitments

- Stay flexible- Create an endeavor that will work for

YOU


Leveraging IP


Licensing Mistake #1:

NO BOILERPLATE LICENSE!

- You will not save money or time by using another company’s license.

Leveraging IP



Failure to accurately determine value

- Scope of media;- Scope of geography;- Value to bottom-line of potential

licensee;- Scope of time

Leveraging IP



No game plan/ strategy drafted into license agreements

Solution:- Use “Phases” or Milestones to gauge

success and - Allow for easy termination- Tie payments to desired outcomes as

much as possible

Leveraging IP


Licensing Agreements:

PAYMENT OPTIONS: - Lump-Sum upfront payment; - Front loaded payment; - Royalty; - Performance-based; - Cascading/ Waterfall provision; - Etc.

Leveraging IP



PAYMENTS: - If royalty based, include Accounting

provision; - If International, be certain to state

conversion or type of currency (ie US dollars)

- Provide for bond if necessary after due diligence

Leveraging IP



Exclusive v Non-Exclusive: - Exclusive is more “valuable”; - If permitted to sub-license, be certain

to include specific indemnification provision

Licensing

BUSINESS:

“Someone Doing Something For Someone Else In Exchange for Something”


Licensing

Example 1:

Idea: water bottle nipple attachment for babies


Licensing

Market:- Young parents- Caretakers- Grandparents- People shopping for moms (“gift market”)Etc.- Other babies? Gag gifts?


Licensing

Potential Licensees:- Gerber- Green Sprouts- Evenflo- Gag gift developers- Others…


Licensing

Possible License Strategy:

- Several licenses in different countries;

- Performance-based (i.e. if achieve milestone of $100k in revenue by end of year 1, then automatic license for another year. If under $100k, termination with 90 days notice by Licensor.


Leveraging IP


Customized Packages: Example 1- EIN- TM Review- 2 hr. consult- 1 Agreement draft- Redlines

Example 2- Operating Agreements, etc.- Business Plan Review- Strategic Plan- Additional Contract- Redlines

CONTACT: 503.780.6565

WWW.MBJAFFELAW.COM

Leveraging IP


THANK YOU!Facebook: Law Offices of Melissa B. Jaffe, PCPhone:503.780.6565Email: [email protected]@MelissaBJaffe

mailto:[email protected]

mailto:[email protected]?subject=RE:%20To%20Patent%20or%20Not%20to%20Patent

Questions?

[email protected]

@traklight

IDENTIFY. PROTECT. SUCCEED.

www.traklight.com

Mary Juetten

mailto:[email protected]

http://www.traklight.com/

mailto:[email protected]?subject=RE:%20To%20Patent%20or%20Not%20to%20Patent

Leverage Your IP Assets

Education

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