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Intellectual Property and Other Legal Issues for Emerging Companies.

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Presentation on theme: "Intellectual Property and Other Legal Issues for Emerging Companies."— Presentation transcript:

1 Intellectual Property and Other Legal Issues for Emerging Companies

2 Presenters Timothy K. Cutler, Esq. Connie C. Dai, Esq. CUTLER P.C. 10 Milk Street, Suite 720 Boston, MA 02108 Peter Stecher, Esq. GesmerUpdegrove, LLP 40 Broad Street Boston, MA 02109

3 Peter Stecher, Esq. Practicing Patent Law for 12 Years 5 years as a Patent Agent and 7 years as an Patent Attorney Patent Prosecution and Litigation Expertise in Patent Matters Related to Electrical, Electronics, Optics and Computer-Related Patents Industries Includes Universities, Clean Energy & Green Technology, Consortium & Standards Setting, Hardware, Internet, Medical/Health, Software and Telecom/Wireless Former Examiner of the U.S. Patent Trademark Office Registered to Practice at the U.S Patent Office and Licensed in Massachusetts J.D. (Suffolk University) Electrical Science & Engineering (MIT) MBA Candidate (Northeastern)

4 Timothy K. Cutler, Esq. Practicing 24 Years 10 Years in Los Angeles & 14 Years in Boston Founded CUTLER P.C. in 2004 Served as a Mediator Completed Over 30 Trials in 4 States Overseen Legal Matters in 8 States Represented Start-ups and Emerging Companies in the Areas of Software, Internet, Retail, Engineering and Marketing Represented Chinese Companies Creates Legal Entities Drafts: Licensing Agreements, Contracts and Employment Agreements Handles: Employment Matters, Disputes Between Shareholders, Unfair Business Practices and Contract Disputes Handles: Purchase and Sale of Businesses

5 Connie C. Dai, Esq. Practice Areas: Business, Employment and Immigration Law Handles: Experience in Cross Border Transactions, Drafting and Reviewing Contracts, Judicial Internship, Employment and Investor Visa and Immigration as well as Naturalization Business and Financial Consulting with Start-Ups and Established Businesses Anti-Trademark Infringement Management, Joint Venture Negotiation, and IP Training in Coca-Cola China NECINA – Fundraising and Public Relations Education: J.D. (Suffolk University); MBA (University of Calgary); and B.A. (Shanghai University) Bar Admissions: Massachusetts; and New York (Pending) Languages: Native Mandarin; and English

6 What is a Patent? A Patent is Basically a Contract Between the Inventor(s) and the Government

7 What is a Patent? The Right to Exclude Others From: Making Using Offering for Sale Selling Importing In return for full disclosure, patent owner is granted the right to exclude others from making, using, or selling the patented invention Patent owner has a “limited monopoly (20 years from filing) preventing independent use or sale by others of the patented invention

8 Exclusionary Right Example Exhibit A Exhibit B

9 What Can Be Patented? 35 U.S.C. §101 Inventions Patentable Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this rule.

10 The Value of Patents Offensive Prevent Others From Making, Using Or Selling oOften Unrecognized Basis For Licensing To Generate Royalty Income Defensive Shield Against Actions By Others Basis For Settlements Based On Cross-licensing

11 Standard of Patentability Invention Must Be Novel (New), Useful, And Non-Obvious Utility oAny Beneficial Use Novelty oNot Already Described Or Patented Elsewhere, Or Known, Used Or Available To Others In The U.S. Non-Obviousness oStandard Is One Skilled In The Relevant Technology  Engineer’s Standard (?)  Legal Standard (would it have been obvious to one of ordinary skill in the art)




15 3,787,678 1. In a rechargeable battery powered light, the combination of a case having a removable end cap at a rear end for closing a rear opening in said case, D.C. current dry cell batteries being removably received through said opening into an interior chamber of said case, a lamp in a front end of said case, a switch on a side of said case, said batteries, lamp and switch being in a series electrical circuit, a recharging receptacle on said case for receiving a male plug connected to an external electric power source, said recharging receptacle having terminals electrically connected to opposite terminals of said batteries, and a safety cover being slidable along an outer side of said case so to selectively cover up a normally exposed switch button of said switch during recharging period and preventing said circuit accidentally being closed at such recharging time.













28 Patent or Not? Pros and Cons of Having a Patent Factors to Consider Nature of Business/Business Model Prototype Life Cycle of Products/Service Manufacturing Process Benefit Cost Analysis

29 Changes in Patent Law AIA – American Innovation Act Potential implications on business

30 Copyright What Is Copyrightable? Original Works of Authorship Fixed in Tangible Medium of Expression Exclusion Merger Doctrine Compilations Copyright Owner’s Rights Reproduce Derivative Distribute Public Display Statutory Exemption – Fair Use

31 Trademark What is a Trademark? Why is a Trademark Useful? How will a Trademark Offer Protection?

32 Trade Secrets What is a Trade Secret? Information Not Known to the Public at Large It Can Be a Compilation of Public Information Something that Gives a Company a Competitive Edge or Advantage in its Business How Does a Company Protect Its Trade Secrets? Policies and Procedures Limit Access to the Trade Secret

33 Non-Disclosure Agreements What is a Non-Disclosure Agreement? When are Non-Disclosure Agreements Used? What to Look for in a Non-Disclosure Agreement: Description Of What Is Being Disclosed The Circumstances Surrounding The Disclosure Does Not Constitute A License No Limits On Consequential Damages Choice Of Law Provisions

34 Work-For-Hire What Does Work-for-Hire Mean? What is the Work-For-Hire Definition: Work performed by an employee within his/her scope of work; or work that is commissioned, specified as a work-for-hire in a written agreement and is identified by statute as matters falling within the work-for-hire definition The definitions are narrowly construed and are (1) A contribution to a collective work; (2) A part of a motion picture or other audiovisual work as a sound recording; (3) A translation; (4) A compilation; (5) An instructional text; (6) A test; (7) Answer to material for a test; or (8) An atlas. Software is not included What is the Use of Licensing Agreements as an Alternative to Being a Work-For-Hire?

35 Licensing Agreements What Types of Software Licensing Agreements Are There? Perpetual Fixed Term Multiple Users Pay Per Use Exclusive Non-Exclusive Pricing Impacting/Limiting Amounts of Future Licenses

36 Non-Compete Agreements Such Agreements Are NOT Favored in the Law Such Agreements Must be for a Legitimate Business Purpose: Protect Trade Secrets Protect Confidential Information Protect Goodwill What Language Should be Included in the Agreement? Describe the Confidential Information Reasonable Time and Scope Who Owns Goodwill? The Court’s General View of Goodwill What is a Non-Solicitation Agreement? Contrast to Confidentiality Agreements

37 Options For Non-Resident Entrepreneurs Part-Time Entrepreneur Start A Business While On H-1B Sponsored By An Employer Full-Time Entrepreneur Start A Business And Use It To Sponsor Your H-1B Establish US Subsidiary Of Foreign Company And Use It To Sponsor L- 1 Multinational Manager Or Employee With Special Knowledge

38 Start A Business While On H-1B Type Of Business To Incorporate Restricted Role As “Passive Investor” Limited Tax Advantages

39 Start A Business And Sponsor Own H-1B Key Is Valid Employer/Employee Relationship Feasible And Sound Business Plan Independent Board Of Director Managerial Capacity Hiring Plan Of Other Employees Client Contracts Office Lease

40 U.S. Subsidiary and L-1 Visa Must Work 1 Out of 3 Years in Parent Company In Managerial Role or Employee with Special Knowledge Strong Track Record of Parent Company Helpful Feasible and Strong Business Plan


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