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?