Intellectual property and startups.The protection of intangible assets explained by the lawyer

What are the rules to follow to protect a startup's most precious asset, its intangible assets?The lawyer Umberto Locatelli responds.

• Intangible assets are a startup's most valuable asset.The intellectual property system therefore safeguards those who innovate, even in a sustainable way.
• They can be divided into two large families:industrial property includes inventions (patents), trademarks, industrial designs and models;copyrights, on the other hand, concern literary, artistic, musical and architectural works.
• Startup founders should deal with intellectual property before launching their brand or product on the market, to ensure that it does not overlap with pre-existing realities.
• When presenting your startup to third parties (investors, partners, suppliers), it is best not to reveal the elements that could be the subject of a patent.Alternatively, you can ask for a non-disclosure agreement (nda) to be signed.

One's most precious heritage startups It cannot be touched or locked in a safe.It is represented by its inventions, by its brand, by the elements that it was able to bring to the market before anyone else.In short, from yours intangible assets.The law protects them, dividing them into two large families:there industrial property includes inventions (patents), trademarks, industrial designs and models;the copyrights (copyright) instead concern literary, artistic, musical and architectural works.The intellectual property system, in fact, safeguards those who innovate and allows them to build an entrepreneurial project.It therefore deserves to be considered as a driving force for growth and development, also in a sustainable way.

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Up to this point everything seems crystal clear but, when it's time to get into practice, the first doubts arise.Completely absorbed in the mission of laying the foundations of their startup, some founders momentarily lose sight of the need to protect their intangible assets, only to realize it when it is too late.Or they would like to do it, but don't know who to turn to and are intimidated by the costs.Or again, opportunities are precluded - such as a pitch in front of an audience of potentials investors or participating in a challenge launched by a large company - because they are afraid of revealing too much and having their project stolen.

To clarify these and other questions we turned to the lawyer Umberto Locatelli, partner of the Uno Quattro law firm in Milan, specialized in the field of intellectual property and a profound expert in the world of startups.

What are the most common needs for which startups turn to your studio?
Among the cases related to the protection of the intangible assets of startups, in first place is the registration of the trademark, i.e. the "business card" of a company, represented by a word, a design, the shape of a product, a sound or a combination of these elements.The validation of brand identity is one of the main reasons that bring startups closer to the world of intangible assets.

Many, however, do not expect to have to carry out a preliminary activity:simply, they create a brand and want to register it.On the contrary, as soon as you start thinking about a name and a logo you should proceed with the search for prior art, that is, verify the existence of other prior signs that are in conflict with the trademark being registered and which therefore could prevent it from being protected.

What other advice would you give to a startup preparing to register its trademark?
Since you register a trademark by choosing one or more product classes, I would recommend looking to the future and extending your research to classes similar to those in which the startup operates.This serves both to evaluate broader coverage in the event of future expansion and to verify the existence of third parties with similar names.A startup food, for example, should make sure that there are no confectionery companies that have the same or similar name to his.In summary, we must not think in watertight compartments.

On many occasions startups are called to present their idea through pitches, meetings with investors and challenges.How to prevent someone else from misappropriating it?
When transmitting confidential information to a third party, it is a good idea to ask them to sign an NDA (non-disclosure agreement).A confidentiality agreement can provide for both the application of penalties in the event of violations, and a non-competition agreement which limits the supplier's or partner's ability to carry out competitive activities.

In some contexts, however, this is not possible:during a pitch, for example, you cannot make the entire audience sign an NDA!In this case, the ideal would be to avoid disseminating technical information on processes relating to innovative aspects of the project, i.e. those that could be protected by a patent in the future.Even during the challenges you should have this foresight.

But can ideas be protected?
No, and that's the real problem.In order to protect them, ideas must be concretized through an artistic work such as a book, a film or an architectural project (in this case we speak of copyright) or through inventions, trademarks, industrial designs and models (which fall into the category of industrial property).

When there is no possibility of patenting your invention immediately, for economic reasons or because these requirements are still missing, the path to take is always that of confidentiality.So sign stringent confidentiality agreements, pay attention to the duration of the confidentiality obligation, create armored know-how contracts.

You cited economic reasons.How much does it cost to patent an invention?And register a trademark?
There are two factors that affect the cost of the patent:the search for prior art, i.e. other previous inventions similar to one's own, and the cost of filing the Italian or European registration application.

The costs for registering a trademark, however, are much more variable.In Italy, the basic cost for a single product class is 101 euros, plus another 42 in stamp duty;for each additional class you have to spend another 34 euros.For a European brand, however, the basic cost is 850 euros;the second class costs 50 and the following 150 each.To these amounts must be added the costs of the professional who takes care of the deposit, in addition to any research phase.

Can the startupper deal with the prior art search alone, or must he contact a consultant?
As regards patents, it is difficult to carry out the prior art search independently because a patent consultant is needed, often supported by an engineer.

For brands, however, there are some tools, so it becomes easier to organize yourself independently.However, we must pay attention to several clues that are not immediate for those unfamiliar with the topic:in addition to checking whether there are possible conflicts with other pre-existing brands in your sector, in fact, it is also advisable to extend the investigation to other product classes.

In short, doing it yourself means saving the consultant's fee but, on the other hand, it exposes you to much bigger risks.If one day someone opposes its brand, the startup finds itself forced not only to look for a consultant to defend itself in the opposition phase, but also to rebrand and throw away all the investments made up to that moment.

But what happens in the event of a dispute?
As regards trademarks, proceedings are opened before the trademark office which is following the registration procedure.The trademark opposition phase is an adversarial procedure in which the parties must bring elements to support their arguments to assert their rights.If the office believes that a trademark is in conflict with another pre-existing one and therefore violates the rights of the previous owner, it can order its cancellation.In this case, the entrepreneur loses his investments in marketing, the registration fees paid when filing the application and also the legal costs incurred to defend himself.

A well-done research does not 100 percent exclude cases of opposition, but typically gives a clear idea of ​​any problems that could arise in registration houses.The entrepreneur can decide to take a risk and move forward, or to immediately design a new brand.

In short, contacting a consultant immediately can avoid unpleasant surprises in the future...
Let's put it this way:the founder of a startup already has to think about many things.To address issues that are not within your scope and which at the same time are so important, such as the protection of intangible assets, it is better to rely on a consultant.

This is also why my studio has developed i legal boxes, legal products that include a fixed-cost assistance service.This is because we want to make life easier for startups and professionals, offering clear, quick and effective solutions to specific needs that are on the agenda for them.Just like the protection of intangible assets:register a trademark, stipulate an NDA, transfer assets from the founders to the company, supervise the trademark and so on.We have tried to standardize the know-how that we have developed in fifteen years of activity, combining it with a personalized assistance component.

Many are afraid to call a lawyer precisely because they have no idea how much it might cost, but our profession must also meet the needs of companies that are born with few resources, have great potential and deserve to receive excellent assistance .