IP on day zero
Have you done this important step yet?
Hey founders et al. In today’s edition, we explore when you should start thinking about your company’s IP portfolio (spoiler alert, it was yesterday). We also highlight great attorneys and tools you can use as you navigate IP matters.
Remember to participate in our unmatched and unforgettable referral program by scrolling to the bottom.
What’s in your IP portfolio?
Founder should ideally be thinking about IP matters pre-incorporation. Typically, founders create and contribute things that likely fall into the IP realm (ideas, inventions, design or code) prior to forming the company entity. As a result, the IP rights to this work likely belong to the founder who created the work and they need to be legally transferred to the company. This can be done via a Founders’ Agreement or Assignment Agreement. If you have not formally transferred IP and you’ve already incorporated, you can check out some of the resources below to figure out how to do so.
The same considerations must be made for early hires. If you are bringing someone on in order to acquire rights to previous work, make sure this is clearly spelled out in an Assignment Agreement.
Why is this important? IP considerations will surface themselves during fundraising, ownership transfers, mergers acquisitions, among other critical moments. Future investors will walk the other way if IP ownership is not straightforward during due-diligence; and correcting IP issues during these crunch-periods may put your company to the whim of the IP owner - who may be hostile :( .
Check out the tools below for more reading/resources and lawyers who can help you navigate your asset protection!
Tools and Resources
There are some excellent IP specific resources out there that founders may not know about. We are always adding to this list. See the full list of resources here.
Short - how much should patent applications cost? Pricing transparency is an area in which the legal industry could really improve. Here is a helpful guide to patent application cost in case you are considering filing a patent for something you’ve created for your startup.
Medium - Penn Law IP Kit: Penn Law has a great startup founders kit that covers all types of legal topics. Check out their IP Kit here.
Long - Comprehensive Guide to IP For Startups: Enterprising Ideas by WIPO is a guide on how startups can use the IP system to remain competitive and to understand the risks that may arise if it is ignored.
Have any resources you'd recommend to other founders? Please fill out this form.
Lawyer Spotlight
We love highlighting founder-friendly lawyers doing great work in startup spaces. Check out our database of founder-friendly firms and lawyers for previously highlighted lawyers.
Melissa helped us with incorporating our startup and a transfer of IP. She was perfectly knowledgeable and strategically shrewd. I'll always work with Gunderson because I know we're in good hands.”
Reviewing founder profile: AI/ML startup, 1-10 employees, seed round.
Work done: Corporate Formation, Intellectual Property
Melissa Marks and the entire Gunderson Dettmer team comes highly recommended from a startup founder working on AI/ML tooling in the financial services industry. Melissa and the Gunderson team advise entrepreneurs, emerging growth companies, and the VC firms & growth equity firms that support them. Thanks Melissa Marks and the entire Gunderson team for being founder friendly!
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Referral Program (yes, it’s real)
If you share this newsletter with 10 founders or lawyers, I will send you a 1 of 1 autographed picture of my dog, Dylan. Signed by her, with video proof. And I’ll take your word for it, just email me at heycounsel@substack.com.
Thanks for reading. Stay lawyerly.
Brian