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Intellectual Property

Protecting trademarks, patents, and copyrights is crucial for many businesses. Entrepreneurs should understand their rights and how to protect their intellectual property

  • Patents:
    • Protect inventions and novel processes related to the SaaS product or its underlying technology.
  • Trademarks:
    • Protect brand names, logos, and other distinctive symbols associated with the SaaS company.
  • Copyrights:
    • Protect original software code, user interfaces, and creative content within the SaaS platform.
  • Trade Secrets:
    • Protect confidential information that gives the company a competitive advantage, such as algorithms, customer lists, and business strategies.

Table of Contents​

  1. Trademark vs Copyright
  2. Works For Hire
  3. Conceptual Intellectual Property
  4. Operational Intellectual Property
  5. Federal Trademark Registration
  6. What is a trademark
  7. [Assignment]

Copyrights VS Trademarks VS Patents​

copyright >> cheap

trademark >> medium

patent >> expensive

trademark: business branding

copyright on the artwork

copyrights: books, etc.

Overlaps and Distinctions​

While copyright protects the expression of a work and trademark protects the brand identity and goodwill associated with a product or service, there can be instances of overlap.1 For example, a distinctive graphic illustration or logo used as a brand identifier might be protected under both copyright law (as an original artistic work) and trademark law (as a source indicator).1 This dual protection can offer a more robust legal shield. For a multi-faceted brand aiming for comprehensive coverage across music, fashion, and lifestyle, understanding that no single type of intellectual property right will cover all aspects is essential. The creative works themselves (songs, videos, website content) require copyright protection, while the brand names, logos, and overall brand identity that unify these diverse outputs and distinguish them in the market necessitate trademark protection. Achieving truly versatile coverage means strategically acquiring both copyright and trademark registrations for different aspects of the brand.

Work for Hire Ownership​

This Agreement enforces that all software engineering, cost and accounting, and IP rights and IP deliverables involving worker on behalf of BUILD then MARKET as “works of hire” will exclusively belong to BUILD then MARKET.

IP Rights for SaaS Startups​

In the context of SaaS startups in New Jersey or New York, the ownership of intellectual property (IP) can differ significantly between independent contractors (ICs) and employees.

For employees:

  • Employers generally own the IP created by employees during the course of their employment.
  • However, IP created outside of employment duties and using personal resources typically remains the property of the employee.
  • Employers can secure IP ownership through employment contracts that include provisions for work-for-hire agreements and non-disclosure agreements (NDAs).

For independent contractors (ICs):

  • The ownership of IP created by ICs is determined by the specific terms of their contract with the company.
  • If the contract does not explicitly state that the company owns the IP, the IC retains ownership.
  • Companies can ensure they own the IP created by ICs by including clauses in the contract that transfer IP rights to the company.

In both cases, it is crucial for SaaS startups to have clear and comprehensive agreements to avoid disputes and ensure the protection of their IP. Legal experts like Andrew S. Bosin, a SaaS lawyer in New Jersey, can help draft these agreements to safeguard the interests of the company.

Intellectual Property Deliverables​

Intellectual property deliverables refer to the tangible or intangible outputs that are generated as a result of intellectual property (IP) creation or development. These deliverables are protected by various forms of intellectual property rights, such as patents, copyrights, trademarks, and trade secrets. The specific types of IP deliverables can vary depending on the nature of the creative work or innovation involved. Here are some common examples:

  1. Patents: Patent deliverables include inventions, processes, or improvements that are novel, non-obvious, and have industrial applicability. These can be tangible products, methods, or even software algorithms that provide a technical solution to a problem.

  2. Copyrights: Copyright deliverables encompass original creative works, such as literary works, artistic creations, music compositions, films, software code, architectural designs, and other expressive content. Copyright protects the specific expression or manifestation of an idea rather than the idea itself.

  3. Trademarks: Trademark deliverables are distinctive signs, symbols, logos, names, or phrases that identify and distinguish goods or services of a particular source. They can include product names, logos, slogans, or even distinctive packaging designs.

  4. Trade Secrets: Trade secret deliverables are valuable and confidential information that provides a competitive advantage to a business. This can include formulas, recipes, manufacturing processes, customer lists, marketing strategies, or any other confidential business information that is not generally known.

It's important to note that the protection and ownership of these IP deliverables can vary based on jurisdiction and the specific laws governing intellectual property. Consulting with an intellectual property attorney or expert is advised to understand the specific requirements and processes for protecting and managing intellectual property deliverables.

Operational Intellectual Property​

i. Technology platforms, ii. Software, iii. Web sites, publications, databases and other content; and iv. Business processes, material to the operation of the business.

Operational intellectual property refers to intellectual property rights that are directly related to the day-to-day operations and activities of a business or organization. It encompasses the intellectual property assets that are used, created, or acquired in the regular course of business to support and enhance the company's operations, products, or services.

Operational intellectual property can take various forms, including:

  1. Patents: These are exclusive rights granted to protect inventions or innovations that provide new and useful solutions to technical problems. Operational patents may cover technologies, processes, or products that are integral to the company's operations.

  2. Trademarks: Trademarks are distinctive signs, such as logos, names, or symbols, used to identify and distinguish a company's goods or services from those of others. Operational trademarks may be associated with the company's brand, products, services, or specific operational activities.

  3. Copyrights: Copyright protection applies to original creative works, such as literary, artistic, or musical works, software code, or architectural designs. Operational copyrights may cover software programs, instructional materials, marketing materials, or other creative works used in the company's operations.

  4. Trade Secrets: Trade secrets are confidential and valuable business information that provides a competitive advantage. Operational trade secrets may include manufacturing processes, formulas, customer lists, business strategies, or other proprietary information that is kept confidential to maintain a competitive edge.

  5. Industrial Designs: Industrial designs protect the visual aspects of a product, such as its shape, configuration, or ornamentation. Operational industrial designs may be relevant to the physical appearance or design of products used in the company's operations.

  6. Know-how: Know-how refers to practical knowledge, expertise, or techniques that are not generally known or easily accessible to others. Operational know-how may include specialized operational processes, technical expertise, or industry-specific knowledge that contributes to the company's operational efficiency or competitive advantage.

Operational intellectual property is valuable to a company as it can provide legal protection, help establish market differentiation, and support innovation and growth. Proper management and protection of operational intellectual property are essential to safeguard the company's assets, maintain a competitive edge, and prevent unauthorized use or infringement by others.

Conceptual Intellectual Property​

i. Inventions, whether or not patentable, whether or not reduced to practice or whether or not yet made the subject of a pending patent application or applications, ii. Ideas and conceptions of potentially patentable subject matter, including, without limitation, any patent disclosures, whether or not reduced to practice and whether or not yet made the subject of a pending Patent application or applications, iii. Trade secrets and confidential, technical or business information (including ideas, formulas, compositions, designs, inventions, and conceptions of inventions whether patentable or un-patentable and whether or not reduced to practice), iv. Industry know-how: technology, manufacturing and production processes and techniques, methodologies, research and development information, drawings, specifications, designs, plans, proposals, technical data, copyrightable works, financial, marketing and business data, pricing and cost information, business and marketing plans and customer and supplier lists and information

Conceptual intellectual property refers to intellectual property rights that protect intangible ideas, concepts, or creations that have not yet been fully developed or manifested into tangible form. It encompasses the early-stage or abstract aspects of intellectual property that are in the conceptual or ideation phase.

While traditional intellectual property rights such as patents, trademarks, copyrights, and trade secrets protect tangible or concrete expressions of ideas or creations, conceptual intellectual property focuses on safeguarding the underlying concepts, ideas, or innovations that may eventually be developed into tangible forms of intellectual property.

Conceptual intellectual property can include:

  1. Ideas: Novel and inventive ideas or concepts that have the potential to be transformed into tangible inventions, processes, or products. These ideas may be in the form of inventions, business models, methods, or strategies.

  2. Research and Development (R&D) Concepts: Innovative concepts or hypotheses that form the basis of ongoing research and development activities. These concepts may include scientific theories, experimental designs, or new approaches to problem-solving.

  3. Prototypes and Proof of Concept: Early-stage prototypes, models, or demonstrations that showcase the feasibility or functionality of a concept. While these may not be fully developed products, they represent the initial manifestation of a conceptual idea.

  4. Design Concepts: Preliminary design concepts or sketches that outline the visual or aesthetic aspects of a future product, logo, or branding element. These concepts contribute to the development of tangible designs or trademarks.

  5. Early-stage Innovations: Innovations or breakthroughs that have been conceived but are yet to be fully realized or commercialized. These may include technological advancements, process improvements, or unique solutions to problems.

Conceptual intellectual property is valuable as it provides a foundation for future innovation and development. While it may not have legal protection in its conceptual form, it is often treated as confidential information or trade secrets to maintain exclusivity and prevent unauthorized disclosure or use. As conceptual intellectual property progresses and takes tangible forms, it may become eligible for protection under traditional intellectual property rights.

Intellectual Property Disclosure​

Commercial IP​

All products and services currently produced, manufactured, marketed, licensed, sold or distributed by BUILD then MARKET and

ii. All products and services currently under development by "team member" that BUILD then MARKET intends to make commercially available through the duration of this agreement.

suited for music, content, not suited for short phrases or brand names

  1. reproduce work
  2. distribute copies of work
  3. make derivative works

database rights​

phonetic spelling regex

search query: FLEX f / ph sound *{"fh"}le{"h"0:1}{"ckqx"}*

example 2: pepzi soda / soft drinks

will be rejected because of Pepsi-Cola

black and white standard character format more broad protection

Docker Subscription Service Agreement

Entrepreneurship book

Common IP traps​

Publishing a blog post or other form of writing can potentially impact the patentability of an invention, depending on the specific circumstances and the patent laws of the country in question. Generally, patent laws require an invention to be novel and non-obvious in order to be eligible for patent protection.

If you publicly disclose an invention before filing a patent application, it may have negative consequences on the patentability of that invention. In many countries, including the United States, a public disclosure prior to filing a patent application can be considered prior art. Prior art refers to any information that is available to the public before a given date and can include published documents, public use, or any other form of public disclosure.

If your blog post or other writing contains detailed information about an invention and is accessible to the public, it may be considered prior art. This can potentially jeopardize your ability to obtain a patent for that invention, as it may no longer meet the novelty requirement. Once an invention is publicly disclosed, the clock starts ticking, and in most jurisdictions, you typically have a limited period (often one year) to file a patent application after the public disclosure.

It's important to note that patent laws vary from country to country, so it's crucial to consult with a qualified patent attorney or intellectual property professional who can provide guidance specific to your situation and jurisdiction. They can help you understand the potential implications of publishing your writing on patent protection and advise you on the best course of action to protect your intellectual property rights.

examples of prior art that can potentially disqualify a patent:​

  1. Published Documents: If there is a published document, such as a scientific paper, article, thesis, or even a blog post, that describes an invention identical or similar to the one claimed in a patent application, it can be considered prior art. The publication must be available to the public before the filing date of the patent application.

  2. Public Use or Sales: If an invention has been publicly used, sold, or otherwise made available to the public before filing a patent application, it may be considered prior art. For example, if you have publicly demonstrated or sold your invention at trade shows, exhibitions, or conferences, it can potentially disqualify your patent application.

  3. Prior Patents or Patent Applications: If there is an existing patent or a pending patent application that describes the same or similar invention, it can serve as prior art. Patents and patent applications are typically published and can be searched to determine their relevance to a new invention.

  4. Publicly Available Products or Prototypes: If an invention is publicly available and accessible to the public, it can be considered prior art. This includes commercially available products, prototypes, or even inventions that have been disclosed on public platforms, such as open-source repositories or online forums.

  5. Oral Disclosures: In some jurisdictions, public oral disclosures, such as presentations at conferences, lectures, or public discussions, can also be considered prior art.

It's important to note that the determination of prior art and its impact on patentability can be complex. The specific circumstances and the applicable patent laws of the country in question will play a significant role. It's always advisable to consult with a qualified patent attorney or intellectual property professional to assess the potential impact of prior art on your patent application.

Determining the relevance of prior art to a new invention can present several challenges. Here are some common challenges that arise during this process:​

  1. Comprehensive Search: Conducting a thorough and comprehensive search for prior art can be challenging. Prior art can exist in various forms, including published documents, patents, patent applications, technical literature, online resources, and more. Locating and accessing all relevant prior art sources can be time-consuming and requires expertise in searching patent and non-patent literature databases.

  2. Interpretation and Understanding: Interpreting the content of prior art documents accurately can be complex. Prior art documents may use technical jargon, specialized terminology, or be written in a different language. It requires a deep understanding of the subject matter and the ability to decipher the technical details to determine its relevance to the new invention.

  3. Differentiation of Claims: Analyzing the claims of a patent or patent application and comparing them to the new invention can be challenging. Claims define the scope of protection sought and can be written in legal language that may require interpretation. Determining whether prior art anticipates or renders obvious the claims of the new invention requires a thorough understanding of patent law and claim construction principles.

  4. Timing and Priority: Determining the timing and priority of prior art can be crucial. The date of publication, public disclosure, or the filing date of a patent application can impact its status as prior art. Establishing the chronological order of events and assessing whether the prior art predates the filing date of the new invention is essential in evaluating its relevance.

  5. Diverse Sources: Prior art can come from a wide range of sources, including academic publications, industry journals, patents from different jurisdictions, conference presentations, online forums, and more. Identifying and evaluating the relevance of prior art from these diverse sources requires a comprehensive understanding of different industries and disciplines.

  6. Subjectivity and Legal Interpretation: Assessing the relevance of prior art involves some level of subjectivity and legal interpretation. Determining whether prior art discloses all the essential features of the new invention or renders it obvious can be a matter of judgment. Different patent examiners, patent offices, or courts may have varying interpretations, leading to potential challenges and disagreements.

Given these challenges, it is advisable to consult with a qualified patent attorney or patent search professional who is experienced in prior art searches and analysis. They can help navigate these complexities and provide guidance on the relevance of prior art to your specific invention.

Material infringement​

Material infringement refers to an act of infringing on a patent, trademark, or copyright that is considered significant or substantial. It means that the infringement is not trivial or insignificant, but rather has a significant impact on the value or use of the intellectual property in question.

The determination of whether an infringement is material depends on the specific facts and circumstances of each case. Factors that may be considered in determining whether an infringement is material include the extent of the infringement, the degree of similarity between the infringing work and the original work, and the potential economic harm caused by the infringement.

Material infringement can result in legal action, such as a lawsuit or a request for an injunction to stop the infringement. In some cases, material infringement can also result in criminal charges, particularly in cases of copyright infringement involving large-scale piracy or counterfeiting operations.

Overall, material infringement is a serious matter that can have significant legal and financial consequences for individuals and businesses that engage in intellectual property infringement. It is important to consult with a legal professional to understand the implications of material infringement in a given legal context.

Proprietary Information​

Sensitivity LevelTermDefinition
0public informationinformation that the company has made available to the general public such as the company's external website or in social media. Public Information may be freely distributed both inside and outside the company
1internal informationInformation that is proprietary or not intended for public knowledge. Due to its technical or business sensitivity, access is limited to team members, and third party vendors covered by a non-disclosure agreement. Such as employee PII, employee user accounts, private/personal email addresses, organizational charts, deductibles, passwords, encryption keys.
2Confidential Informationpersonal information of the Company's customers and team members, such as age, birthday, SSN. Also private business records, Vendor Contracts, source code
MAXrestricted Informationthe highest level of protection that require a business need to know for access. if lost, disclosed, or compromised it could result in harm, embarassment, inconvenience, negative impact, or unfairness to an individual or the company. need to know basis. payroll, salary, wages. payroll records have sensitive information like bank account numbers, credit card numbers, SSN, driver's license. Including intellectual property, business plans, mergers & acquisitions, or IT secrets.

types of information

TERMSDefinitions
work of authorship
INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT TO A LLCThe Limited Liability Company (LLC) Intellectual Property Assignment Agreement is intended to assign certain relevant Intellectual Property from a founding Member of the LLC to the Limited Liability Company. It is most often executed in the formation of the company.