High-growth Start Ups:

Managing IP

Start-Up Company's Intellectual Property (IP) Strategies

IP Problems and Challenges

IP Solutions and Strategies

Frequent Start-Up IP Problems:

• Disputes over trade secrets with former employers

• Non-compete

• Poor documentation of ownership of IP

• Casual attitude toward disclosure of patentable inventions

• No strategy on rights acquisition

• No strategy on IP exploitation

New IP Challenges:

• Internet domain names

• Patentability of business methods

• Inevitable disclosure

• Acceleration of international IP issues in the world of national IP laws

Keys to IP Success:

• Understanding industry

• Understanding potential IP "checkpoints

• Understanding strategy

  • What to "give away"

  • What to license

  • What to keep as crown jewels

Strategies for Success:

• Inventory rights in your research and products

• Develop strategy for protecting your products

• Develop strategy to challenge competitors

• Implement an exploitation strategy

• Monitor changes in the law and participate in such changes

Disciplinary Steps to Protect a Start-up Company's IP

Source: Skjerven, Morill, MacPerson, San Jose, CA, and Saratoga Venture Finance

1. Have all employees sign upon first day of employment an "Employee Proprietary and Confidential Information Agreement". It will help keep the company's secrets secret.

2. Install and enforce a written patent notebook procedure. It will strengthen your company's claims that its intellectual property is very valuable, as well as improve chances of obtaining desired patents.

3. Issue to all of the company's technical staff written patent notebook recordkeeping instructions. Be sure your people respect the importance of these instructions.

4. Be sure your VP of engineering strictly manages the issuing and tracking of all notebooks given to the technical staff.

5. Keep on hand a good stock of the kind of notebooks commonly found in stationery stores.

6. Issue to all employees and all managers Confidential Disclosure Agreements that cover the following areas and instruct them to use the documents in dealing with non-employees:

1. START-UP, INC., and a third party exchanging confidential information.

2. START-UP, INC., receiving confidential information from a third party.

3. START-UP, INC., disclosing confidential information to a third party.

7. Require that your VP of finance and administration issue and control all Confidential Disclosure Agreements.

8. Prepare a document called "Submission of Inventions and Suggestions" for the use of third parties, typically non-employees but also often non-technical employees of START-UP, INC.

9. Prepare and "Invention Disclosure" form that will clearly identify the holder of any proprietary information that START-UP, INC., may be interested in using or developing.