Small Business Today Magazine SEP 2014 ELP ENTERPRISES | Page 40

EDITORIALFEATURE

The What, When, & Why -

Agreements, Applications, & Contracts
By Craig Kaiser

A

new White House report, Making in America:  U.S. Manufacturing,
Entrepreneurship, and Innovation
(6/2014), states that new technologies are making it easier for entrepreneurs
to turn their ideas into products.  In fact, the
U.S. is manufacturing at its fastest pace in
over 20 years.  According to Forbes Magazine, Houston ranked as the No. 1 city for
manufacturing jobs with San Antonio at
No. 4.  Retaining the value in this expansion
of innovation requires the effective use of
agreements, applications, and contracts.

Certain questions should be answered
throughout the cycle, from R&D through taking the finished product to market, including: 
Before the birth of any new innovation -

•    Who will own the new innovation?
(company, inventors, investors) – assignment agreement
• Is the inventor contracted to another
party by way of previous agreement?
• If the inventor is an employee, did
he/she sign an agreement giving that
company rights to their innovations?
• If no longer employed, is inventor contractually obligated to relinquish innovations for set time to prior employer?
• Is there a need for secrecy to preserve
the innovation value? (employee, vendor) – trade secret/NDA
• If new company owns the innovation,
is its leadership structure defined?  –
corporate papers
• Is there intellectual property to protect? - patents, trademarks, copyrights,
trade secrets

Preparing the innovative product
to hit the market -

•    How will the product be marketed
and to whom? - sales team, distribu-

Many a company has
met its demise before
taking flight due to lack
of clarity on ownership. 
torship, wholesale, licensing, each an
agreement
Will this innovation be branded?  New
Company?  - trademark filing
Website?  - file copyright
Manuals? – file copyright
Planning on exhibiting or selling the
innovation?  - Do not talk about your
innovation at a conference or in an
article for publication prior to filing a
patent application.
Are there liability or warranty issues? –
protected by agreements

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After the product has been introduced -

• Are there Improvements to the original innovation? – file patent
• Is there any infringement on your registered trademark, issued patent, or
copyright filing?

Here are just a few examples of what can happen if innovations are not properly protected:

1. Trademarks

By failing to file for trademark protection
on a name or mark, another party could
file an application for your name or mark
and, once issued, prevent you from using
your own unprotected name in commerce and forcing you to re-brand.  Simply filing a company name with the state
when setting up a business does not mean
you own it.You do not own H