What is the point of a startup IP checklist?
Checklists are wonderful. A helpful startup IP checklist keeps founders focused on the more important tasks and serve as reminders of any incomplete items.
Intellectual property may seem daunting for startups. My goal with the following IP checklist is to keep it simple by focusing on the more significant IP rights that startups ought to consider. So let’s get started.
1. Have the entire team assign IP rights to the company
At the very outset, get everyone on the team to assign their IP rights to the startup company. This includes founders, employees, consultants, independent contractors and anyone else who may be involved with the creative process and/or the development of the product.
The early stage timing of an IP assignment agreement is critical. If you wait, future circumstances may make it exponentially more difficult to secure signatures. People can change their minds or relocate.
2. Understand which types of IP are most important for your startup to protect
A proper understanding of basic IP rights will serve as a solid foundation for a smart IP strategy. We’re not talking about an expert level of knowledge, but a decent understanding of the differences between copyrights, trademarks and patents. Knowing what is protected by each IP right will prove to be intensely practical when you make decisions on which to pursue. Sometimes, knowing what an IP right cannot do is just as important as knowing what it can do.
3. Budgeting for IP protection
IP attorney’s fees vary widely. Some charge hourly while others, such as our firm, bill flat rates. Here are ballpark estimates to give you a rough approximation of initial filing fees:
- Trademark application: ~$800 to $1,300 for a single class of goods/services (our firm can conduct a knockout search before filing)
- Design patent application: ~$1,600 for a small entity (e.g., company with fewer than 500 employees)
- Utility non-provisional patent application: ~$8,500 to $15,000 depending upon complexity
Keep in mind the above estimates cover only the initial filing, and not the ongoing prosecution of the application. Generally, trademark applications and design patent applications require less ongoing work. Utility non-provisional patent applications typically involve several rejections, leading to an extended application process that can easily take years and $5,000 to $20,000 of additional costs (and sometimes more) beyond the initial filing.
Design patents vs. utility patents
Design patents protect how inventions look while utility patents protect how inventions work.
Using a (cheaper) design patent to cover functional features generally will not work, but that won’t stop businesses from trying.
Patentable vs. Infringing: know the difference
A patent does not give the patent owner the right to make the product. What a patent gives is the right to exclude others from making the product. Know the difference between patentable and infringing.
A trademark must always be tied to a particular product or service. You don’t just trademark a word in a vacuum. Be clear on the goods or services you are selling or intending to sell under a particular mark.
If possible, have a knockout search conducted before using the mark or filing a trademark application.
Copyright registrations protect original works which may comprise a variety of creative expressions:
- audio (e.g., songs, audio recordings, sheet music)
- text (fictional, non-fictional)
- visual (artwork)
- three-dimensional works (e.g., jewelry, statues, objects)
- audio-visual (movies, film)
7. Plan ahead and take action
Earlier is almost always better when it comes to protecting IP. Patent laws have certain hard deadlines for filing US and international patent applications which cannot be extended.