General Legal Resource Materials
Entrepreneurship Law Editorial Team
Steven H. Bazerman & Jason M. Drangel, Guide to Registering Trademarks (1999-)
Abstract (from the publisher):
You can minimize your research time and prepare trademark forms with confidence when you use the Guide to Registering Trademarks as your on-the-spot guide. This carefully constructed loose-leaf offers more than 200 practice-tested ready-to-use forms available in both hard copy and on CD-ROM. Step-by-step instructions guide you through the process, addressing both basic and unusual situations you may encounter along the way. The forms are organized by category: client forms; searches and other pre-filing activities; applications for registration; responses to office actions; section 8 and 15 affidavits; and renewals and interparty proceedings.
The Guide to Registering Trademarks answers questions from which form to use in recording an assignment to how to start a concurrent use proceeding. Keep it close at hand to make your trademark application process as painless as possible.
Donald S. Chisum, PATENTS: A TREATISE ON THE LAW OF PATENTABILITY, VALIDITY AND INFRINGEMENT (1997).
Gilbert Guide, The Entrepreneur’s Guide to Patents, Copyrights, Trademarks, Trade Secrets & Licensing (2004).
Abstract (from Amazon Product Description):
Today, virtually all companies, artists, and innovators run the risk of losing their competitive edge-and big money-by not adequately safeguarding their intellectual property. This book addresses the full range of legal protections available-patents, copyrights, trademarks, trade secrets, and licensing.
Robert C. Faber & John L. Landis, Faber On Mechanics of Patent Claim Drafting (6th ed. 2008-) (previously known as Landis On Mechanics of Patent Claim Drafting).
Abstract (from Amazon):
More patent applications are rejected because of claim-drafting flaws than because of problems with inventions. A trusted working tool for more than two decades, PLI s Faber on Mechanics of Patent Claim Drafting gives you the clear and complete guidance you need to draft foolproof claims for any type of invention. Faber on Mechanics of Patent Claim Drafting spotlights proven claim-drafting practices and techniques that have been firmly established by patent authorities and custom. This lucid, timesaving handbook offers you start-to-finish directions on how to craft claims for different types of inventions; real-world examples of effective claim drafting; insight into the accepted words and phrases you should use in specific drafting situations; instruction on how to describe structures in the drawings; and numerous tips on how to avoid common claim-drafting mistakes. Included are helpful glossaries of patent terms and the mechanical terms used in drawings. Updated at least annually, Faber on Mechanics of Patent Claim Drafting is an indispensable guide for patent specialists and other intellectual property attorneys, corporate counsel, non-specialists who represent inventors, patent officials, and inventors.
Catherine L. Fisk, WORKING KNOWLEDGE: EMPLOYEE INNOVATION AND THE RISE OF CORPORATE INTELLECTUAL PROPERTY, 1800-1930 (2009).
Abstract (from product description at Amazon.com): Skilled workers of the early nineteenth century enjoyed a degree of professional independence because workplace knowledge and technical skill were their "property," or at least their attribute. In most sectors of today's economy, however, it is a foundational and widely accepted truth that businesses retain legal ownership of employee-generated intellectual property. In this book the author chronicles the legal and social transformations that led to the transfer of ownership of employee innovation from labor to management. This deeply contested development was won at the expense of workers' entrepreneurial independence and ultimately, the author argues, economic democracy.
Anne Gilson Lalonde, Karin Green & Jerome Gilson, Gilson on Trademarks (2007-).
Van Lindberg, INTELLECTUAL PROPERTY AND OPEN SOURCE: A PRACTICAL GUIDE TO PROTECTING CODE (2008).
Abstract (from product description at Amazon.com):
This book is designed to help the reader understand patents, copyrights, trademarks, trade secrets, and licenses, with special focus on the issues surrounding open source development.
Robert E. Litan, Handbook on Law, Innovation and Growth (2011).
Abstract (from Amazon):
This Handbook provides breakthrough analyses on an important, cutting-edge topic: the connections between the legal system, both in substance and process, and innovation and growth. Arguably the most important intellectual development in legal scholarship and judicial decision-making over the past four decades has been the increasing use of economic modes of analysis in legal reasoning. The Handbook on Law, Innovation and Growth sheds new light on the linkages between innovation, growth and the legal system, answering questions that will help policymakers better understand and implement the law in an effort to advance economic welfare.
This Handbook brings together many prominent scholars to examine the features of the legal infrastructure that affect both innovation and growth. Individual chapters explore different legal subject areas (including intellectual property rights and economic progress, and why do entrepreneurs patent?), in most cases offering recommendations for rule changes that could accelerate growth, primarily in the context of the US economy. The introductory chapter cohesively ties all of the contributions together and explains why it is time for legal scholarship and research to move in a new direction. Surpassing other literature on the subject, this landmark Handbook is certainly a critical volume for any student or scholar of law and economics.
Peter G. W. Keen, Transforming Intellectual Property into Intellectual Capital: Competing in the Trust Economy, in Capital For Our Time: The Economic, Legal, and Management Challenges of Intellectual Capital (Nicholas Imparato ed., 1999).
Abstract (from Amazon Product Description): Capital for Our Time brings together experts from widely different fields to address the challenges of intellectual capital. It includes essays by cutting-edge academics, economists, attorneys, researchers, intellectual capital managers, and CEOs as well as representatives of the venture capital, government, and trade association communities. Prominent professionals discuss the impact of intellectual capital on national and corporate performance including:
The role of ideas in economic growth
The effectiveness of the legal system in protecting idea-based property rights
The demands of knowledge management
Investor, policy maker, and management perspectives on valuing intellectual assets
The impact of intellectual capital on business relationships
Specific challenges of the Internet and the Genome Project
Impending changes and opportunities in the international regime
Intellectual capital and the innovation imperative
Franco Malerba, Knowledge-Intensive Entrepreneurship and Innovation Systems (2010).
Abstract (from Amazon):
This book examines entrepreneurship from three interrelated perspectives. Firstly, it links entrepreneurship to innovation and to the generation, transformation and use of knowledge. Secondly, it inserts entrepreneurship in innovation systems of various types- national, sectoral and local. Thirdly, it views entrepreneurship not as a single event but as a process that evolves in time, from the pre-entry experience, to the entrepreneurial act, to the evolution of the entrepreneur and the new company.
With chapters from a range of international contributors, the book answers questions such as; what are the main dimensions of knowledge intensive entrepreneurship? What are the factors affecting its emergence, evolution and performance? How important is knowledge intensive entrepreneurship for European growth and competitiveness? Is the situation of Central and Eastern Europe, engaged in a process of major economic and institutional transformation, similar or different from the one of Western Europe?
J. Thomas McCarthy, Robert E. Schechter & David J. Franklyn, MCCARTHY'S DESK ENCYCLOPEDIA OF INTELLECTUAL PROPERTY (3d ed. 2004).
Abstract (from product description at Amazon.com): This work is a multifaceted practitioner’s guide of first reference. It defines patent, trademark, and copyright terms of art and uses them in context to better explain each one and the various legal scenarios in which they may be found. The Encyclopedia also analyzes relevant cases and statutes and provides citations to more cases and IP treatises for additional research.
Janice Mueller, INTRODUCTION TO PATENT LAW (2006).
Janice M. Mueller, PATENT LAW (3d ed. 2009).
Abstract (from product description at Amazon.com):
This text clarifies the principal legal doctrines, key judicial authority, governing statutes, and policy considerations for obtaining and enforcing a U.S. patent. It includes a chapter that addresses central aspects of international patent law as they affect U.S. practice.
Chun M. Ng et al, NAVIGATING INTELLECTUAL PROPERTY DISPUTES: LEADING LAWYERS ON PROTECTING IP ASSETS, PREVENTING AND RESOLVING DISPUTES, AND UNDERSTANDING RECENT REGULATIONS (2009).
Abstract (from product description at Amazon.com): Featuring lawyers from leading law firms, the authors guide the reader through the various aspects of intellectual property, including trademarks, copyright, patents, and trade secrets. From developing a balanced IP portfolio to analyzing the financial impact of litigation, these top lawyers offer best practices for monitoring, auditing, and protecting a client's intellectual property. Additionally, these leaders discuss domestic vs. international IP, dispute resolution, the role of experts, client misconceptions, the prevention of IP theft, and current IP trends. The different niches represented and the breadth of perspectives presented enable readers to get inside some of the great legal minds of today, as these experienced lawyers offer up their thoughts around the keys to success within this ever-changing field.
David Nimmer, NIMMER ON COPYRIGHT (1997-).
David Nimmer, COPYRIGHT ILLUMINATED: REFOCUSING THE DIFFUSE US STATUTE (2008).
Abstract (from product description at Amazon.com): This work addresses many of the common issues that arise in the practice of copyright law, including the following: the work for hire doctrine; repeat infringers; fair use determination; and substantial similarity of computer programs. The volume primarily collects articles originally published by the author between 1988 and 2006 (mostly in the past few years), but Prof. Nimmer has updated the texts and woven them together into a unified whole.
Alexander I. Poltorak & Paul J. Lerner, ESSENTIALS OF LICENSING INTELLECTUAL PROPERTY (2004).
Abstract (from publisher): Full of valuable tips, techniques, illustrative real-world examples, exhibits, and best practices, this handy and concise paperback will help you stay up to date on the newest thinking, strategies, developments, and technologies in licensing intellectual property.
John W. Schlicher, PATENT LAW: LEGAL AND ECONOMIC PRINCIPLES (2005).
Jeffrey G. Sheldon, HOW TO WRITE A PATENT APPLICATION (2009).
Abstract (from product description at Amazon.com): This resource takes the reader step by step through the entire patent application process.
David J. Teece, THE TRANSFER AND LICENSING OF KNOW-HOW AND INTELLECTUAL PROPERTY: UNDERSTANDING THE MULTINATIONAL ENTERPRISE IN THE MODERN WORLD (2009).
Abstract (from product description at Amazon.com): The international transfer of technology is one of the most important features of the global economy. However, the literature on it is sparse. This book encapsulates the author's contributions to this field over the last three decades and provides insights into the manner, mechanisms, and cost of technology transfer across national boundaries and the implications for (the theory of) the international firm.
TRADEMARK MANUAL OF EXAMINATION PROCEDURE (TMEP) (5th
ed. 2007), available at: http://tess2.uspto.gov/tmdb/tmep
U.S. Department of Commerce, MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) (8th ed. 2001, latest revision July, 2010), available at http://www.uspto.gov/web/offices/pac/mpep/documents/front.htm
J.J. Baloyi, Demystifying the Role of Copyright as a Tool for Economic Development in Africa: Tackling the Harsh Effects of the Transferability Principle in Copyright Law
, 17 Potchefstroom Electronic L.J. 87 (2014).
Abstract (from publisher): This article focuses on the role of intellectual property laws including copyright and related rights, in entrepreneurial process and economic development in Sub-Saharan Africa. It focuses on why the intellectual property law system in Sub-Saharan Africa which has rich cultural resources, is not able to support entrepreneurship which in return, will encourage economic development in the region.
Steven M. Bauer, Assets and Liabilities in an Intellectual Property Audit, 1 B.U. J. Sci. & Tech. L. 8 (1995).
Abstract (from author): While Congress struggles to slow down or even reverse the pendulum swing of plaintiffs' rights in most civil tort cases, the pendulum continues upward unfettered on matters relating to intellectual property. At the same time that Congress seeks to enact statutes of limitations in product liability cases, it may extend the patent term from seventeen years from the date the patent issues, to twenty years from the filing date of the patent application; and the term for copyright from an author's life plus fifty years, to an author's life plus seventy-five years. At the same time that Congress institutes a "losers pay" legal fee reimbursement policy, the courts encourage litigation by broadening their interpretations of what is copyrightable, what is patentable, and what constitutes a valid trademark. Finally, while Congress debates ways to restrict the size of damage awards in many civil cases, the courts place renewed emphasis on developing theories to calculate larger damage awards in patent cases. These are only some of the more important changes that Congress and the courts are considering. Most of these changes strengthen the hand of the innovator and are best considered "pro-plaintiff."
Richard G. Braun, Note, America Invents Act: First-to-File and a Race to the Patent Office, 8 Ohio St. Entrepreneurial Bus. L.J. 47 (2013).
Abstract (adapted from author): On September 16, 2011, President Barack Obama signed into law the Leahy-Smith America Invents Act (AIA). This law marks the first significant overhaul of the patent system in almost sixty years and will completely change the way companies file for patents. The AIA made numerous significant changes to the U.S. patent system. Perhaps the most significant change is the switch from a “first-to-invent” system-where a patent would be awarded to the person able to show that they invented a particular product first-to the more common “first-to-file” system. This note discusses the first-to-invent standard and why reform was necessary in the first place. It explains in detail the changes instituted by the AIA, and outlines the ways that the AIA and the first-to-file system negatively affect small businesses and individual inventors. This note then outlines some of the positives behind the AIA. Finally, the note advises small corporations and inventors how they can best take advantage of the AIA and protect their intellectual property.
Patricia E. Campbell, Coping with the America Invents Act: Patent Challenges for Startup Companies, 8 Ohio St. Entrepreneurial Bus. L.J. 355 (2013).
Abstract (by author): On September 16, 2011, President Barack Obama signed into law the provisions of the Leahy-Smith America Invents Act (AIA or the Act), setting into motion a series of reforms that would, over the next eighteen months, substantially reshape the U.S. patent law system. A White House press release characterized the AIA as “the most significant reform of the Patent Act since 1952” and predicted that it “will help American entrepreneurs and businesses bring their inventions to market sooner, creating new businesses and new jobs.” The Act itself states that it is intended to provide inventors with increased certainty regarding the scope of their rights and promote international uniformity in the procedures used to secure patent rights. Obtaining patent protection is vital for startup companies. Yet, despite its goals of assisting entrepreneurs, creating businesses and providing greater certainty regarding patent rights, the AIA contains numerous provisions that give rise to new challenges for startup companies and other small businesses seeking patent protection for their inventions, potentially making it more difficult for them to obtain patents and casting critical doubt on the validity of any patents they may receive. These challenges are the result of two sets of provisions in the AIA, the shift to a “first-inventor-to-file” system, including the expanded definition of prior art and the uncertainty surrounding “disclosures” and the multitude of new opportunities for third parties to challenge the issuance and validity of patents. This paper briefly examines the relevant provisions of the AIA and explores the ways in which emerging companies may be disadvantaged by the Act.
Jennifer L. Case, How the American Invents Act Hurts American Inventors and Weakens Incentives to Innovate, 82 UMKC L. Rev. 29 (2013).
Abstract (by author): Years of effort and lobbying by coalitions of large corporations to reform U.S. patent law culminated in the enactment of the Leahy-Smith America Invents Act (“AIA”). Among other things, the AIA converts the United States’ current first-to-invent (“FTI”) system into a first-to-file (“FTF”) paradigm. The AIA awards a patent-and all of its commercial protection-to the first person to apply for the patent. The AIA also redefines the terms of the patent system’s grace period. Under the AIA, inventors must choose between filing for a patent before their idea is perfected or hoping that no one discloses their idea while they continue to develop their product. This Article outlines the fundamental ways in which the AIA changes how inventors’ rights are protected. Specifically, this Article focuses on how the new FTF system and its weakened grace period undermine new product development and hurt inventors. It emphasizes how the re-designed patent system negatively impacts individual inventors, startups, and small businesses.
Leah Chan Grinvald, Resolving the IP Disconnect for Small Businesses, 95 Marq. L. Rev. 1491 (2012).
Abstract (by author): Small businesses are an important component of the American economy. In fact, the jobs created by small businesses could assist the United States in overcoming its most recent economic downturn. Paradoxically, though, the failure rate of small businesses is quite high. Although various factors contribute to this high failure rate, one of the factors the U.S. government has focused on has been the disproportionate impact that intellectual property laws, policies, and their enforcement may have on small businesses. While the U.S. government has paid attention to the impact of domestic intellectual property laws on small businesses, the government has paid little attention to the impact that the implementation of international intellectual property obligations may have on small businesses. This disconnect threatens to undo the efforts of the U.S. government, as implementation of these obligations in the United States pose similar hurdles to success for small businesses. One recent example of this disconnect and potential for serious harm to small businesses is the Anti-Counterfeiting Trade Agreement (ACTA), where the U.S. government has seemingly all but ignored small businesses. This Article uses ACTA as an example of how the U.S. government should be analyzing and negotiating international intellectual property agreements with an eye toward the impact on small businesses, which would thereby resolve the disconnect and create a coherent policy approach.
Christopher A. Cotropia, The Individual Inventor Motif in the Age of the Patent Troll, 12 Yale J.L. & Tech. 52 (2009-2010).
Abstract: The individual inventor motif has been part of American patent law since its inception. The question is whether the recent patent troll hunt has damaged the individual inventor's image and, in turn, caused Congress, the United States Patent and Trademark Office (USPTO), and the courts to not be as concerned with patent law's impact on the small inventor. This Article explores whether there has been an attitude change by looking at various sources such as congressional statements and testimony in discussions of the recent proposed patent reform legislation, the USPTO's response to comments on two recently proposed sets of patent rules, and recent Supreme Court patent decisions. These sources indicate that the rhetoric of the motif has remained unchanged, but its substantive impact is essentially nil. This investigation also provides a broader insight into the various governmental institutions' roles in patent law.
Peter J. Gardner, A Role for the Business Attorney in the Twenty-First Century: Adding Value to the Client’s Enterprise in the Knowledge Economy, 7 Marq. Intell. Prop. L. Rev. 17 (2003).
Abstract (from author): This Article seeks to identify and evaluate the major emerging influences that will affect the practice of business law in the United States in the twenty-first century and to suggest ways in which attorneys can address the consequent challenges to their practices.
Jane C. Ginsburg, Separating the Sony Sheep from the Grokster Goats: Reckoning the Future Business Plans of Copyright-Dependent Technology Entrepreneurs, 50 Ariz. L. Rev. 577 (2008).
Abstract (from author): In MGM v. Grokster, the U.S. Supreme Court established that businesses built from the start on inducing copyright infringement will be held liable, as judges will frown on drawing one's start-up capital from other people's copyrights. The Court's elucidation of the elements of inducement suggests that even businesses not initially built on infringement, but in which infringement comes to play an increasingly profitable part, may find themselves liable unless they take good faith measures to forestall infringements. This Article addresses the evolution of the U.S. judge-made rules of secondary liability for copyright infringement, and the possible emergence of an obligation of good faith efforts to avoid infringement. Recent inter-industry principles suggest that proactive avoidance measures may become a matter of "best practice." The Article next considers whether statutory safe harbors insulate entrepreneurs who would have been held derivatively liable under common law norms. Finally, the Article compares the U.S. developments with recent French decisions holding the operators of "user-generated content" and "social networking" websites liable for their users' unauthorized posting of copyrighted works.
Jane C. Ginsburg, User-Generated Content Sites and Section 512 of the US Copyright Act (Columbia Public Law Research Paper No. 10-255, 2010), available at http://ssrn.com/abstract=1711924.
Abstract: This book chapter considers the liability of entrepreneurs of ‘user-generated content’ (UGC) sites. These immensely popular sites, such as YouTube and My Space, enable their participants to post and view a great variety of content, not all of it in fact generated by the posting user. The legislative compromise worked out between telecommunications providers and content owners in the 1998 ‘Digital Millennium Copyright Act’ provides the statutory framework, at once insulating the operators of UGC sites from debilitating copyright sanctions, while still affording meaningful relief to copyright owners. The statutory criteria to qualify for the section 512(c) safe harbor are designed to ensure that the beneficiaries of the safe harbor remain copyright-neutral with respect to the content they host.
The recent District Court decision in Viacom v. YouTube, however, indicates that the statutory safe harbor may shield even the entrepreneur who anticipates – indeed “welcome(s)” – massive infringements so long as the entrepreneur lacks “actual or constructive knowledge of specific and identifiable infringements of individual items.” While the statute makes clear that the entrepreneur should not be pressed into service as the investigative arm of the copyright owner, the Viacom decision does not simply decline to impose an obligation to seek out the infringers who may lurk within the user base. Rather, the decision arguably rejects neutrality to read into the statute a high degree of solicitude not only for online entrepreneurs whose businesses occasionally may accommodate infringing users, but also for those who effectively solicit infringers. If, by contrast, the neutrality principle does animate the statute, a court could appropriately apply that principle through a duty to take reasonable precautions to avoid apparent and repeat infringements.
Stuart J.H. Graham & Ted Sichelman, Symposium: Intellectual Property and Entrepreneurship: Article: Why Do Start-Ups Patent?, 23 Berkeley Tech. L.J. 1063 (2008).
F. Scott Kieff, Removing Property from Intellectual Property and (Intended?) Pernicious Impacts on Innovation and Competition (George Washington Univ. Legal Studies Research Paper No. 547, and Stanford Law and Economics Olin Working Paper No. 411, 2011), available at http://ssrn.com/abstract=1797287.
Abstract: Commentators have poured forth a loud and sustained outcry over the past few years that sees property rule treatment of intellectual property (IP) as a cause of excessive transaction costs, thickets, anticommons, hold-ups, hold-outs, and trolls, which unduly tax and retard innovation, competition, and economic growth. The popular response has been to seek a legislative shift towards some limited use of weaker, liability rule treatment, usually portrayed as “just enough” to facilitate transactions in those special cases where the bargaining problems are at their worst and where escape hatches are most needed. This essay is designed to make two contributions. First, it shows how a set of changes in case law over just the past few years have hugely re-shaped the patent system from having several major, and helpful, liability-rule-pressure-release-valves, into a system that is fast becoming almost devoid of significant property rule characteristics, at least for those small entities that would most need property rule protection. The essay then explores some harmful effects of this shift, focusing on the ways liability rule treatment can seriously impede the beneficial deal-making mechanisms that facilitate innovation and competition. The basic intuition behind this bad effect of liability rules is that they seriously frustrate the ability for a market-challenging patentee to attract and hold the constructive attention of a potential contracting party (especially one that is a larger more established party) while preserving the option to terminate the negotiations in favor of striking a deal with a different party. At the same time, liability rules can have an additional bad effect of helping existing competitors to coordinate with each other over ways to keep out new entrants. The essay is designed to contribute to the literature on IP in particular, as well as the broader literatures on property and coordination, by first showing how a seemingly disconnected set of changes to the legal rules impacting a particular legal regime like the patent system can have unintended and sweeping harmful consequences, and then by exploring why within the more middle range of the spectrum between the two poles of property rules and liability rules, a general shift towards the property side may be preferred by those seeking an increase in access and competition.
Douglas Gary Lichtman, The Economics of Innovation: Protecting Unpatentable Goods, 81 Minn. L. Rev. 693 (1997).
Abstract (from author): This Article argues that, when appropriately crafted, state laws designed to protect unpatentable innovation neither conflict with the policies underlying federal patent law nor undermine patent law's incentive structure. Unpatentable need not mean unprotectable. Instead, state laws that merely prohibit the unauthorized use of particularly fast and inexpensive copying techniques actually complement the federal scheme, encouraging innovation in areas where patent law simply cannot reach. To place these issues in their proper context, Part I briefly traces the history of the state law/federal law conflict in Supreme Court jurisprudence. This Part introduces the negative inference of patent law, the dubious assumption that by virtue of its being denied patent protection, unpatentable innovation must be denied all forms of state protection as well. Part II develops a simple model of an idealized, efficient intellectual property regime. It argues that development costs - costs incurred by an innovator in the production of an original good that are neither repeated by that innovator in the production of a later copy nor repeated by a competitor in the production of his first copy - establish the baseline level of rewards that an efficient system would grant to innovators. Rewards might exceed this baseline, but they ought never to fall below it. In Part III, the Article compares the real-world patent system to this simplified, idealized alternative. It points out differences, suggests explanations, and argues that appropriately crafted state laws can help the real-world patent system to more closely approximate the idealized model. Part IV suggests that state protections will neither conflict with federal patent policies nor undermine patent law's incentives so long as the statutes allow innovators to recoup only their development costs. Part V then shows that the laws advocated here - narrow protections that prohibit the unauthorized use of particularly fast, inexpensive copying technologies - are so limited. The Article concludes by warning that unpatentable innovation is more at risk today than ever before. Copying technologies are increasingly cheap, fast, and accessible; and valuable intellectual property is more often in the form of raw information, an inherently copyable good. The federal regime cannot keep pace with this ever-changing landscape; therefore the need for appropriately limited state protections is all the more pressing. State law can provide for a more graceful transition from the strong protections of federal patent law to the competitive realities of the unfettered market, if only the courts would allow it. This Article will attempt to explain why they should.
Tanya M. Marcum & Eden S. Blair, Entrepreneurial Decisions and Legal Issues in Early Venture Stages: Advice that Shouldn’t Be Ignored, 54 Bus. Horizons 153 (2011).
Abstract: Entrepreneurs make numerous business decisions each day, many of which have significant legal implications. Due to a lack of time and knowledge, however, these entrepreneurs too often make quick decisions regarding important matters—both current and future—based on a few primary factors, one of which is cost. Entrepreneurs appear to make decisions based on concrete, but frequently inappropriate, factors such as comparison of bottom-line dollar value or relatively small fees; in this scenario, short-term decisions are made that do not take into account intricate legal and strategic implications which may arise down the road. As such, we would suggest a different approach whereby entrepreneurs take the time to learn about and understand the implications of these decisions on long-term sustainability, liability protection, and growth potential. Herein, we discuss how using cost to compare and make decisions has an impact on three issues with legal implications that occur early in the start-up process, and which pose major implications for the entrepreneur if he or she does not deal with them properly. Toward this end, we propose some solutions to help prevent this from happening.
Charles R. McManis, Conclusion-Answering the Call: The Intellectual Property and Business Legal Clinic at Washington University, 17 Wash. U. J.L. & Pol’y 225, 230 (2005).
Abstract: The five articles in this symposium volume have focused on specific aspects of three broad issues: (1) biodiversity loss and what is to be done about it; (2) the national and international debates over the appropriate legal protection and regulation of agricultural biotechnology in view of its potential impact on the problem of biodiversity loss; and (3) the legal protection of traditional knowledge as a means of conserving and promoting sustainable use of biological diversity. As the last of these five articles, by Michael Gollin, points out, one of the principal obstacles in responding effectively to any of these international issues is the lack of access to affordable intellectual property legal counsel in many parts of the developing world where the majority of the earth's biodiversity is located.
Sean M. O'Connor, Teaching IP from an Entrepreneurial Counseling and Transactional Perspective, 52 St. Louis U. L.J. 877 (2008).
Abstract: The traditional law school appellate case method is not well-suited to teaching students either the substance and process of counseling entrepreneurial clients or helping such clients create IP strategies that effectively advance their business vision. This Article describes the author's creation of new courses and clinics to advance teaching IP in the emerging field of entrepreneurship and innovation law.
Sean M. O'Connor, How to Build IPR-Focused Entrepreneurial Law and Business Clinics to Assist Regional Economic Development Around the Globe, International Intellectual Property Institute Report. 2008.
Summary: This report discusses the rationale for facilitating entrepreneurship through Intellectual Property Rights and entrepreneurship-focused clinics as an engine of economic growth that also furthers social justice. It details the structure and services of the Entrepreneurial Law Clinic (ELC) at the University of Washington in Seattle and how the model of the ELC, combined with features of other clinics and centers planned or operational around the U.S., could be exported to developing countries or communities to enable locally controlled and beneficial entrepreneurship that promotes social justice in those communities.
Bryce C. Pilz, Student Intellectual Property Issues on the Entrepreneurial Campus (Univ. of Michigan Public Law Research Paper No. 310, 2013) available at http://ssrn.com/abstract=2199592.
Abstract (by author): Intellectual property questions involving student inventions are increasingly common on campuses where the number of bright and motivated students seeking to become the next Mark Zuckerberg are rising. This article addresses why universities should be paying attention to student intellectual property issues, issues related to identifying the owner of intellectual property in student inventions; managing joint ownership between students and the university; and appropriately managing student interactions with third party sponsors of class projects. Appropriately resolving questions related to intellectual property in student inventions is more important than ever for universities because these questions no longer relate to a mere school project. Rather, these issues shape the foundations of future for-profit ventures. For universities seeking the correct and most reasonable answers to questions involving student intellectual property, the stakes have never been higher.
Matthew J. Pinkerton, Considering the Next Generation of Innovators: Incorporating the Needs of Start-Ups into the United States Patent and Trademark Office’s Intellectual Property Strategy, 23 Pac. McGeorge Global Bus. & Dev. L.J. 313 (2011).
Abstract (adapted from the Introduction): Two essential components of innovation are newly created businesses (commonly known as “start-ups”) and intellectual property (IP) rights: start-ups are a significant source of new ideas, technologies, and processes, while IP rights provide these young enterprises with the incentive to invent and the opportunity to successfully commercialize their groundbreaking work.
In light of the crucial role of start-ups and IP rights for the United States, this Comment reviews the United States Patent and Trademark Office’s (USPTO) IP strategy and its effectiveness in advancing the IP needs of start-ups. This Comment argues that although the USPTO’s concentration on improving the certainty and timeliness of patent and trademark determinations is indispensable in ensuring an effective IP system, such a focus does little to address the needs of start-ups. To improve how its strategy assists start-ups, the USPTO should look to the practices of IP governing bodies in Denmark, Japan and Australia. By adjusting its focus to provide greater support for start-ups in its next strategic plan, the USPTO will enable start-ups to better capitalize on their innovative ideas, which will directly and significantly contribute to economic growth and quality of life in the United States.
Gordon U. Sanford, III, An Intellectual Property Roadmap: The Business Lawyer’s Role in the Realm of Intellectual Property, 19 Miss. C.L. Rev. 177 (1998).
Abstract: The business lawyer's traditional duties are valuable, and their importance should not be underestimated. Tasks, including business formation, securities and tax research, and contract review, are often performed for clients. Yet, in this modern era of value-added lawyering, these services seem somewhat fungible. Thus, the business lawyer must search for creative means to justify ever-increasing fees. The development of "front-end" methods to protect the client's valuable intellectual property assets achieves that goal.
Ted Sichelman & Stuart J.H. Graham, Patenting by Entrepreneurs: An Empirical Study, 17 Mich. Telecomm. Tech. Rev. 111 (2010).
Abstract: This article examines the use of patents by young companies, to test commonly held beliefs that small companies use the patent system to achieve different goals than larger, older companies.
Daniel F. Spulber, Should Business Method Inventions Be Patentable?, 3 J. of Legal Analysis 265 (2011).
Abstract (adapted from author): In this article, the author defines business method inventions and provide an economic framework to address the question of patentability raised in Bilski. A business method invention is the discovery of a commercial technique that firms can apply to address market opportunities. The initial implementation of a business method invention by firms is a Schumpeterian innovation. The article advances several arguments in favor of business method patentability. Business method inventions are an important foundation for entrepreneurship and a channel for the commercialization of scientific and technological inventions. IP protections for business method inventions are essential for economic efficiency, including incentives for invention, efficient allocation of inventions, and transaction efficiencies in the market for discoveries. Business method inventions are significant because they are the foundation of what the author terms the "Business Revolution": the augmentation and replacement of human effort in business transactions by computers, communications systems, and the Internet. The article concludes that the patent system should continue to provide intellectual property protections for business method inventions just as it does for other types of inventions.
Paul M. Swamidass & A.J. Gokcek, Empowering Young Inventors: An Experimental Course on IP and Patent Application Drafting at Auburn University, 35 J. Tech. Transfer 424 (2010), available at http://ssrn.com/abstract=1835030.
Abstract: A new one-credit course on IP and patent application drafting was offered at Auburn University jointly by the authors in spring 2009. The course started with a target of 15 students. Within 1 week of its announcement, the course was oversubscribed; the class was filled within a week of its announcement through e-mails to engineering and business students, a few were turned down, 16 were enrolled including one MS and one Ph.D. student from engineering (graduate students were required to do an additional term paper). The goal of this first-of-its-kind course at Auburn was to teach undergraduate and graduate students to understand the protection of intellectual property rights, and to train them to prepare a patent application fit for submission to the US Patent and Trademark Office (USPTO). The hands-on experience was intended to give them the freedom to grab their own new ideas and protect them through patents as a first step towards the commercial exploitation of their intellectual property (IP). The paper explains the limited goals of the course, outcome and conclusions with a recommendation for other universities to offer a similar course. The course fulfilled an important need and empowered some of the young inventors in the class to consider venturing into a new business based on their product ideas.
Michael J. Zussman, Taking a Bite from the Proverbial Apple: Intellectual Property for Attorneys and Entrepreneurs, 59 Fed. Law. 16 (2012).
Abstract (from author): The author examines how entrepreneurs can use copyright, trademark, and trade dress law to protect their businesses. He illustrates these lessons with examples from Apple Inc.
Michael J. Meurer, Inventors, Entrepreneurs, and Intellectual Property Law, 45 Hous. L. Rev. 1201 (2008).
American Intellectual Property Law Association (AIPLA)
Dephion Research Intellectual Property Network Database
Inventors Resources, The U.S. Patent and Trademark Office, http://www.uspto.gov/inventors/
Trademark Manual of Examination Procedure (TMEP) (6th ed. 2009).
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