Intellectual Property

Intellectual Property plays an important role in the success of many Silicon Valley technology startups. Therefore it is essential to protect it well. Holland in the Valley has interviewed Silicon Valley-based Intellectual Property expert, Ralph Pais from Fenwick & West.

Starting entrepreneurs should ask themselves the following questions: “How does the company handle IP brought in by the founders, by employees, and by third-party consultants?”; “What licenses does the company need to develop and offer its products and services”; and “Does the IP I created as a student/researcher belong to me or to the university?”


Patent Landscape
It is useful for startup companies to collect advice on the patent landscape of the business sector it is in. Some businesses, like the biotechnology industry or mobile telephony, are very patent-rich. Therefore you have to think about licenses from an early stage to avoid later-stage law-suits.

Legal Counsel
It is important to get advice in an early stage in order to get your IP ownership and protection and licensing rights correct from the beginning. The value of some companies depends entirely on its inventions, technologies or design. Problems with the intellectual property can seriously affect your business model, and fixing these problems later can become costly.

IP Protection by Region
Entrepreneurs should be aware of the territorial nature of IP protection. You need to file for a counterpart patent in each and every country where you operate.

Open-Source Software Protection
Software companies should also be aware of the legal problems surrounding open-source software. Ralph Pais recommends, as a general rule, that if you’re not intending to have your software be open source, develop rules and controls for the use of open source right away.

Common Mistakes

Protecting Confidential Information
Many companies underestimate how important it is to protect its confidential information. Your business partners, employees or even casual conversation partners can use the information you provided to them to your disadvantage. It is therefore advisable to use Non-Disclosure Agreements from the start.

In order to use another party’s patented technology or process, you must first obtain a license. It can happen, however, that you begin working with a technology or process for which you were not aware of an existing patent. If a patent holder contacts you to notify that your company’s actions may be infringing on their intellectual property, you must seek appropriate legal counsel on to understand what actions must be taken.


Useful Links

Startup IP Services – Blog written by attorney John Lindsay focusing on Intellectual Property issues


Read more…

– (back to) Establishing a Business in Silicon Valley
– Welcome to Silicon Valley
– Doing Business in Silicon Valley

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