Common IP mistakes made by entrepreneurs

Posted on by Tim Rosenblatt

I went to the Entrepreneurs Round Table last night, organized by Shirley Lin. The first speaker was a lawyer from Pilsbury, Michael Heuga. He had 6 main points that I thought were interesting enough to share

  1. Contamination of IP. Did you come up with it at work? Did you use their hardware to make it (copiers/computers/fax/etc)? Did you work on it during business hours? Be sure you use your own time and hardware if you work on something similar to your day job. Be sure to get IP assigned to your company if there are potential conflicts. (Tim's note: I thought this was very relevant because many entrepreneurs start working on their ideas when they've still got a day job. It's good to keep a very clean split, especially if you plan on taking VC money. A clean due diligence process is a very nice thing.)
  2. If you use a contractor, be sure the work agreement includes assignment of IP. Just because you pay for it doesn't mean you own it.
  3. Patents. Self patenting is frequently overridden. The 10-15k for a patent attorney could be worth it for a clean exit down the line. (Tim's note: while I think this is correct advice for something like a biotech startup, or pure research-driven startups, most ideas are worth nothing when compared to the value of good execution.)
  4. Undercutting patents by public disclosure. Even to VCs. Try and talk in generalities when pitching VCs -- if you pitch your secret sauce to all of the VCs, it's not secret sauce (Tim's note: see above. I'd rather out-execute than out-patent, not to mention that patent reform may be coming soon)
  5. Naming product, company, or services that are similar to competitors. Don't get a Cease & Desist because you didn't take the time to Google around and make sure you're not infringing on a similarly-named & related trademark. Ideally you should pay a trademark attorney, but that's not always reasonable for startups.
  6. Costs of outsourcing. Be careful of a company that has major Fortune 500 clients that they depend on, because if something goes wrong with that client the contractor may drop your work to focus on the Fortune 500 client.
 
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