What Every Startup Enterprise Should Know About Protecting Intellectual Property
Editor's Note: This contributor article is from Edward D. Lanquist and Dominic Rota at the law firm Baker Donelson, who shared eight key steps founders need to think about during their IP journey.
A startup’s most significant asset is often its intellectual property (IP). Inventions, branding, software, and external-facing content can impact the overall value of the startup enterprise and its appeal to investors. This article provides a detailed list of how startups can best protect their IP.
Look Inward
A startup should perform an internal review of its intellectual property by identifying its key brands, reviewing its marketing and promotional material, and analyzing any technological developments or practices that provide value. This will give the company a clearer understanding of its intangible assets and overall business model.
Perform Your Own Research
As part of a startup’s research and development, the company should identify key competitors in the industry and determine what technology, brands, or practices for which they are seeking IP protection. Startup personnel can search, at no cost to the startup, the United States Patent and Trademark Office (USPTO) for registered trademarks, issued patents, or pending trademark or patent applications. Users can also search the USPTO or Google Patents for issued patents and published patent applications.
These searches can educate a startup on its competitors and may also provide ideas for new business technologies.
Interview and Select an Intellectual Property Attorney
Even if startups assess their IP value and research competitors’ IP activity, they will eventually need an attorney for guidance on protecting their assets. The sooner a startup team meets with an intellectual property attorney, the sooner they will understand how to protect their IP. An IP attorney can advise on business models, determine a strategy for safeguarding the company’s IP and other intangible assets, and evaluate existing agreements with vendors and third-party contractors.
An attorney can also advise startups on when to file applications for IP rights. In today’s competitive landscape, timing is everything, and tardiness can be detrimental. The timeframe in which a startup files for intellectual property protection can greatly impact its IP rights. For example, if a startup files a patent application after it has publicly used or disclosed its invention, it may have waived its rights to file in other countries. Or, a startup may forgo statutory damages if it does not register copyright in authored works within a specific timeframe. An IP attorney can make sure your work is properly protected.
Maintain Confidentiality
From the first day a startup discloses key aspects of its business model, it should have confidentiality agreements in place with all parties receiving that information. Documents and materials exchanged should be labeled confidential, non-public, and/or proprietary. This practice can save startups from future headaches.
Watch Your Third-Party Agreements
Startups often engage third-party vendors to help develop their intellectual property. Companies need to pay special attention to the vendor contracts to ensure that the startup owns and controls its intellectual property, and to ensure that the vendors respect the confidentiality of the startup’s proprietary information or trade secrets.
Make Everyone Aware That You Are Protecting Your Inventions
Affixing notices to your IP is one of the best ways of notifying competitors and the public of your rights. Generally speaking, any patented product, system, or method must be marked with the patent number on the product itself or through other constructive means, such as by posting the number on the startup’s website, and any product, system, or method that is the subject of a patent application should be marked “patent pending,” along with the application number. Each creative work should be labeled “copyright” or “©,” along with the owner’s name and publication year. Marks, slogans, designs, phrases or symbols should carry “®” if registered with the USPTO or a “TM” or “SM” if not yet registered.
Look Down the Road
The startup should also focus on future developments: What forms of intellectual property may be protectable in the future? A startup can file a provisional patent application with minimal disclosure to sustain priority in a first-to-file system. These applications preserve a filing date and afford a startup an additional 12-month period to further develop its technology.
A business does not have to have a physical prototype to file a patent application. A startup can file an application that sufficiently describes a mechanical device or computer method. Similarly, for trademarks, a startup does not need to have an advertised mark or design to file a trademark application; the business can file an intent-to-use trademark application on a viable brand.
Consider Your Global Intellectual Property Strategy
A startup’s intellectual property rights are only enforceable in the countries where they are registered. Work with IP counsel to determine which countries are part of your core market – where you anticipate the company to grow and expand – and seek IP protection in those regions.
By following these guidelines, a startup enterprise can protect its intellectual property and create a strong foundation for success.
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Edward D. Lanquist is a shareholder with Baker Donelson who represents clients in matters involving patents, trademarks, copyrights, intellectual property and technology law. He is based in Nashville.
Dominic Rota is an associate with Baker Donelson concentrates his practice in the areas of patents, trademarks, copyrights, trade secrets, information security, and data privacy. He is based in Nashville.
This article is for general information purposes only and does not constitute legal advice. Baker Donelson disclaims liability for actions taken based on the above material. We recommend always consulting a qualified lawyer for specific legal matters.
Featured photo from Unsplash
