Entrepreneurs Checklist

There are many important questions to consider when starting a business, particularly one based on intellectual property.  The following checklist should help you navigate through the process.

 General Corporate Matters

  •     Have you established a corporation, limited liability company (LLC) or other entity to shield you personally from liability?
  •     Assuming you have established a limited liability company, have you prepared an operating agreement?
  •     Do you have non-disclosure agreements with suppliers?
  •     Do you have employment contracts with employees?
  •     Do you have assignment agreements with employees and independent contractors to assign to you intellectual property
        created on your behalf?
  •     Do you have non-disclosure agreements with employees to protect your confidential, proprietary and trade secret information?
  •     Do you have liability insurance?
  •     Do you have a non-compete agreement with key employees?
  •     Will you own intellectual property, such as patents, trademarks and copyrights, in your corporate form or personally?
  •     Have you secured a domain name for your business?

Patents

  •     Do you have a product or service that you have introduced or intend soon to introduce?
  •     Has a patentability search been conducted on any invention?
  •     Has a patentability opinion been received on any invention?
  •     Has an infringement investigation been conducted regarding any product that you have introduced or intend to introduce?
  •     Have you filed a provisional patent application on any invention?
  •     Has a non-provisional patent application been filed on any invention?
  •     Have you considered whether accelerated patent examination is appropriate for any product that is disclosed in a
        non-provisional patent application?
  •     Have you considered whether accelerated patent rights protection is appropriate for any product that is disclosed in a
  •     non-provisional patent application?
  •     Have you preserved your rights to file foreign patent applications?
  •     Have you filed any foreign patent application or application under the Patent Cooperation Treaty?
  •     Have you received an assignment from any inventor of all patent applications?
  •     Have you recorded any assignment?
  •     Do you require employees and contractors to assign inventions?
  •     Have you implemented an invention submission process?
  •     Have you considered an inventor award program?
  •     Do your advertising and promotional materials indicate that products are patented or patent pending?
  •     Do you have a mechanism in place to consider whether any patent is being infringed?
  •     Have you considered monetizing any unused patents?

 Trademarks and Service Marks

  •     Have you had a registrability search conducted for any trademark or service mark that you use or intend to use?
  •     Has a right to use search been conducted for any trademark or service mark that you use or intend to use?
  •     Have you obtained an opinion that you can register and use any trademark or service mark?
  •     Have you filed an application to register any trademark or service mark?
  •     Do your advertising and promotional materials use the notices ® and/or ™?
  •     Have you considered the need to file for foreign protection?
  •     Have you implemented a watch system for competitor trademarks?
  •     Do you use your trademarks and service marks as source identifiers?
  •     Have you implemented guidelines regarding how your trademarks and service marks are used?
  •     Have you licensed any trademark or service mark?
  •     Are license agreements in writing?
  •     Does any license agreement have a quality control provision?

 Copyrights

  •     Have you created any work that is protected by copyright?
  •     Have you applied to register any copyrighted work?
  •     Do you have agreements that require authors to assign all copyrights to you?
  •     Do you own the copyrights to works that you use in advertising and promoting your business, goods and services?
  •     Do you use the copyright notice ©?
  •     Do you update your registered copyrights?
  •     Do you have written license agreements for the licensing of your copyrighted works?
  •     Have you licensed any copyrighted works?
  •     What rights does the licensee acquire under any license?
  •     Do you have a website?
  •     Do you own the copyright in the source code for your website?
  •     Do you have a copy of the source code for your website?
  •     Does your website have adequate terms and conditions controlling its use?
  •     Do you have a privacy policy for information collected at or through your website?

 Trade Secrets

  •     Do you have or create proprietary or confidential information?
  •     Do you have a written policy protecting proprietary and confidential information?
  •     Have you implemented controls to protect your proprietary and confidential information?
  •     Do you have non-disclosure agreements with employees and contractors?
  •     Do you have non-compete agreements with employees and contractors?
  •     Do you have agreements requiring employees and contractors to inform you of proprietary and confidential information?
  •     Do you have agreements that prohibit employees and contractors from disclosing and using proprietary and confidential information of others?
  •     Do you inform departing employees of their obligation to maintain confidential your proprietary and confidential information?