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The Tech Entrepreneur’s Guide to Navigating Intellectual Property

18 Sep | Insights

The Oxford Dictionary defines intellectual property (IP) as “a work or invention that is the result of creativity, such as a manuscript or design, to which one has rights and for which one may apply for a patent, copyright, trademark, etc.”

While that provides a working definition for a general audience, entrepreneurs in the technology sector need something much more specific and better suited to their unique needs. How do you protect the new technologies and inventions you develop? What do you need to secure IP trademarks and patents? What makes that protection worth the investment?

One thing is clear: knowing who owns what, especially when there is collaborative development of joint intellectual property, is especially important for partnerships in the tech and innovation space where navigating IP can make or break the success and long-term sustainability of a venture. The Cenfluence team offers members expertise by providing guidance on industry norms, connecting Cluster Members with expert resources or providing a trusted place to discuss potential concerns to help you make the best decisions for your company. We spoke with two of those expert resources to get the details you need to make the most of your intellectual property.

Types of Intellectual Property
Let’s start with the basics: the four types of intellectual property. We asked Camille Wilson, an attorney with Wilson Dutra, a Jacksonville-based law firm specializing in patents and trademarks for innovation and intellectual property, to tell us about each one and how it can impact a technology entrepreneur’s budding business.

Note: Each type of intellectual property can be complex, and you may need to consult with your attorney to understand how each type could apply to you and your business.

Patent:

In a nutshell, a patent protects inventions. “A patent gives you a temporary monopoly on your invention,” explains Wilson. “Whether you invented software, a product or a manufacturing method, at the end of the patenting process the government gives you a monopoly on it.”

There are two types of patents that most entrepreneurs will consider:

  1. When most people talk about a patent, they’re referring to a utility patent. According to Wilson Dutra’s blog, utility patents account for 90% of all patents issued by the United States Patent and Trademark Office (USPTO). Put simply, a utility patent protects how your invention is used or functions – any novel useful process, machine, manufacture or composition of matter.
  2. A design patent, on the other hand, essentially protects how your invention looks, preventing a competitor from creating a knockoff that looks like your invention, but functions differently. Design patents are primarily used for products and interfaces. For example, Airbnb holds multiple design patents for its interfaces.

Utility patents are the most expensive form of IP protection, and depending on the complexity of the application, can cost tens of thousands of dollars to file, research, write and defend with the USPTO. Additional maintenance fees may even apply once a patent is issued. That said, they are also the longest lasting, with a design patent good for 15 years and a utility patent, 20 years.

The caveats? In addition to being expensive, the patent process is very involved (you can find a great overview on the process here). For a utility patent, the process often begins with the filing of a provisional patent, a sort of placeholder that establishes your filing date a year in advance and allows you that year to decide if you want to proceed.

“The patent process can take years and locks you into the version of your concept that exists at the time of filing,” says Wilson. “If your invention is going to evolve rapidly, a patent may not be the right form of protection. In addition, at the end of the process your patent is published as public information – which tells your competitors in detail what you’re working on.”

Trademark:

A trademark protects branding: a word, phrase, design or combination of those that identifies your company and distinguishes them from competitors. Think of Nike: its swoosh and its “Just Do It” tagline are familiar examples of trademarks; if Converse or Adidas suddenly added a swoosh to their marketing efforts, they would be in trouble.

“Trademarks are interesting because they can be earned organically,” says Wilson. “That said, it’s only applicable as far as your reputation extends. So, if you have a brand that’s recognizable just in Orlando, or maybe across Florida, then someone in California could begin using your symbol and be able to defend that.”

To prevent that from happening, you need to file a federal trademark and utilize the symbol. Costs for a federal trademark vary; if you file without legal assistance, your cost may be as low as $300. A trademark lasts forever as long as you continue to use and protect it, but every 10 years you must prove that you’re still doing so.

Copyright:

A copyright protects creative work, such as art, music lyrics, books and software code in a fixed, recorded form. The least expensive form of protection, a copyright protects your exclusive right to reproduce, distribute and display your created work, and prevents competitors from copying or exploiting that creation without your permission.

“The beauty of a copyright is that you get it automatically once it’s in that fixed form,” says Wilson. “But if you want to enforce your copyright, you have to register it.”

The copyright registration process is fast and simple, primarily involving filing paperwork and little administrative review, and long-lasting – a copyright lasts 70 years for an individual and 120 years for a company. However, it only protects your work exactly as it’s written. If you revise it, you must file for a new copyright. Copyrights are filed with the United States Copyright Office in the Library of Congress and take about three to four months to process.

Trade Secrets:

A trade secret is any practice or property of a company that is not known outside the company and gives the company an advantage over competitors, such as proprietary formulas, recipes, instruments or methods. Trade secrets are protected by the Economic Espionage Act of 1986.

“Think of the recipe for Coca-Cola,” says Wilson. “It’s not just confidential – it’s a whole level beyond that. That recipe is literally locked in a vault, and the company’s success over more than a century has depended on keeping it secret.”

The key to establishing a trade secret is to protect it; if it’s revealed, it loses its value. It’s critical to have safeguards in place to ensure that secret stays proprietary even as employees come and go over the years. One way to do that is to establish non-compete and non-disclosure agreements for all employees – that way they are incentivized to keep your trade secret after their time with your company has ended. The cost involved in trade secret protection relates to legal fees around the creation and enforcement of contracts.

Understanding University IP and How Cenfluence Can Help

“There are two big benefits to partnering with the UCF OTT,” said Svetlana Shtrom, Ph.D., MBA, the director of the University of Central Florida’s Office of Technology Transfer (UCF OTT). “One, the access to our resources and the team’s extensive expertise. And two, partnering with a university for R&D increases opportunities for small-business grants.”

The UCF OTT manages the University’s intellectual property assets and supports the commercialization of discoveries made at UCF. Tech Transfer offices across the Corridor region can be resources for Cluster Members and any company interested in licensing university intellectual property for use in their own technology portfolio. The offices at UCF, the University of South Florida (USF) and the University of Florida (UF) can work with entrepreneurs to match existing Intellectual Property at the university available for licensing that integrates with a company’s research and development plan. The OTT teams offer licensing professionals specializing in different scientific areas of expertise who are excellent resources for understanding the technology available at the university. Each technology is managed from disclosure to deal – the entire life cycle – by the same team member.

Another option available to companies is to co-develop new intellectual property with university faculty through sponsored research, such as The Corridor’s

“The bottom line for a technology entrepreneur is protecting your intellectual property against competitors adds value to your company,” says Shtrom. “When potential investors ask about your technology, you can say no one else can offer it because it’s protected. That makes you look much more appealing and adds meat to your proposal.”

Case in point: While working in a UCF lab as an undergrad majoring in electrical engineering, Joe Sleppy developed a technology that stores energy in copper wiring and capacitors. Rather than taking the usual path for someone with his degree of applying for jobs after graduating, Joe partnered with the OTT to license UCF-developed technology and took a chance in founding Capacitech. With the OTT’s help, Joe secured $20,000 in seed funding. Today, employs seven people and implements their clean energy storage solutions with brands like Red Bull.

The Cenfluence team is available to help understand options available for working with a university and how you can connect to the appropriate resources to make it a reality.

Resources

Where do you turn for help in navigating the intellectual property landscape?

Camille Wilson of Wilson Dutra recommends reaching out to an attorney – look for one who will answer basic fact-finding questions free of charge. Be clear and honest and make the most of your opportunity by clearly articulating what sets your IP apart; attorney-client privilege applies whether you’ve hired the attorney or not, so there’s nothing to fear in being up front. Those same attorneys also often have basic information in their blogs or on their website.

Technology Transfer offices at UCF, USF and UF stand ready to help entrepreneurs capitalize on protected university technology and resources. Funding opportunities, including The Corridor’s Matching Grants Research Program, can help founders maximize their relationships with UCF and USF.

The United States Patent and Trademark Office and the United States Copyright Office also offer plenty of information online.

And, of course, the Cenfluence team stands ready to offer expert advice and make the connections you need to set you on the right path.

 

 

 

 

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