Whether protected through copyright, trade secret, trademark, or patents, software technology companies depend on IP more so than perhaps any other business type in history.
It is surprising, then, just how little founders think about protecting their own IP. Sure, “product-market fit” is an all-engrossing search for truth that tolerates no distraction, but that is at best an explanation, not an excuse.
The real pros will find product-market fit while documenting and protecting IP along the way — it’s the only way to ensure you own your work, after all.
This article provides an overview to help you think about where your IP sits, how to protect it, and how to avoid certain pitfalls that plague far too many startups.
This is the second article in the Extra Crunch exclusive “Startup Law A to Z” series, following my article on corporate matters last week. I will avoid full repetition here, but briefly, the purpose of this series, alongside other Extra Crunch resources, is to provide you enough information to analyze your business circumstances and evaluate your legal risk exposure to common legal issues facing startups, such as corporate matters, IP, business transactions, compliance/regulatory, and HR. If you see legal risks in these or related areas, you can consult the Verified Expert list of best startup lawyers and reach out for help — it’s that simple.
The Legal IP checklist:
Assigning IP
- Founder pre-existing IP
- Employee Confidential Information & Intellectual Property Assignment agreements
- Independent Contractor/Consulting Services agreements
Protecting IP ownership
- Licensed IP and modifications/improvements
- Current or previous employers (see Cal. Labor Code §§ 2780-2782)
Strategic IP Portfolio
Patents
- One-year statutory bar
- Provisional patent application
- International protection
- Software patents under Alice v. CLS Bank
- Offense and defense against patent trolls
Trade Secrets
- Preserve confidentiality
- Limit and control access
Trademarks
- Check USPTO trademark database
- Secure federal trademark registration for enforcement
- Not merely descriptive
Copyright
- Original work of authorship
- Secure federal copyright registration for enforcement
- Understand ‘Fair Use’
Read on for our detailed breakdown of each of these items.
IP, legally speaking
From a high level, IP rights provide their owners the ability to legally prevent others from using certain technology or other protected assets. IP is essentially a property right that can be sold and assigned to others in the same way that vehicles, houses or any other form of tangible property can be bought and sold. Startups should think about IP along the lines of a portfolio specifically created to protect their particular business goals and strategy, in light of competitive market forces.
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