7 tips for startupers
Tip # 1. Keep in mind
That before initiating a startup you most probably were employees or provided services under a civil contract to other companies, Kazakhstani and/or foreign.
The formula "termination of employment or civil law relations – is the end of obligations" does not always work. By signing a contract, you could have assumed obligations that will be binding after the actual termination of the relationship, perhaps even indefinitely. For example, the obligation of non-disclosure of confidential information (NDA, non-disclosure agreement) or non-competition (NCA, non-compete agreement).

What startupers need to know about contracts with employers or contractors:

Nondisclosure agreements should be read carefully!

It is necessary to ascertain who owns the right to intellectual property – products, services, technologies, industrial designs that you created and in the creation of which you were involved. Some companies consider their intellectual property those products that are produced by employees during the contract period, even at off-work time. Therefore, you have to be careful.

If you have been involved in the development with a contractor from another country, find out how intellectual property disputes are resolved in those jurisdictions. For example, in the United States, along with a non-disclosure agreement a non-compete agreement is often signed that establish a specific time frame (6 months, 2 years, or another term) during which the employee or contractor may not engage in competing activities or work for a competitor. In Kazakhstan, such an agreement (or relevant provisions in the employment contract or contractor agreement) will have, at best, only psychological effect. But, in other countries, the USA for instance, such contracts are legally binding in most states. Therefore, when signing a contract with a US investor, verify whether it includes the NCA provisions.
Tip # 2. Rights …
Intellectual property is created by the creative work and the intellect of the creator-author, whose intellectual rights arise by law. When such author works under an employment contract and the parties have not agreed otherwise, all exclusive rights, except the author's personal rights, by default are owned by the employer.

At the same time, if someone other than the company's employees is involved in the development, proper intellectual property formalities with such people too must be taken care of. This is especially true when employees of multiple organizations are involved in the same development.
Tip # 3. Arrangements must be executed in writing
When disclosing information to any third party, whether it is a potential investor, partner, employee of another company, have them sign a written agreement on non-disclosure of confidential information. Be sure to sign it in advance, not after you disclose sensitive information. After all, any information or idea can prompt your interlocutor to the development of the technology that you have already invented.

In the nondisclosure agreement clearly specify what information you are disclosing, and in which cases the party receiving such information may disclose it to third parties. Write in the contract the intentions of each party. Clearly identify the person you are negotiating with.
Tip # 4. Define an intellectual property protection strategy
Patenting is not the only possible way to protect the outcomes of intellectual activity. For example, protecting a technology by a regime of secret of production (know-how) can be effective when reverse engineering of a product by competitors is effortful and complicated.
Tip # 5. Register your trademark (logo) in the Republic of Kazakhstan and abroad
Any startup has a name that will distinguish it from others.

At the same time, it is also desirable to have a logo, which over time can turn into a recognizable one and become a brand.

But, you can develop a logo, spend a lot of money on the production of the necessary attributes, etc. and afterwards a third party may step in and say that the logo you can not use, because it is a registered trademark.

In this regard, theoretically there will be two options:

"Pessimistic" - you will be banned from use and forced to get rid of (including destroy) all products with the logo.

"Optimistic" - you will be allowed to use the logo, but you will have to pay to use it. When and how much will be decided by the parties through negotiations.

To avoid the above scenarios, before you design the logo be sure to:

check, whether there is a confusingly similar TM registered (pending).

apply for registration in all countries of interest to you. Doing that, to submit an application abroad, one must first register the TM in the Republic of Kazakhstan, and only thereafter apply for registration in other jurisdictions.

When applying for registration of a trademark, it is important to bear in mind that the scope of protection of a trademark is defined by the image and list of goods and services for which the trademark is being registered.

In addition, each jurisdiction has its own peculiarities of TM registration. For example, before applying in the United States, one must have begun using the TM or file a Declaration of Intention to Use the TM. And in the UAE, one can not register a trademark for alcoholic beverages or pork.

International treaties, including those ratified by the Republic of Kazakhstan, will permit to take advantage of simplified application opportunities.

For example, the Madrid Agreement Concerning the International Registration of Marks and the Protocol relating to it allow for a single application to be submitted specifying one, multiple or all countries parties to these Treaties. The application is to be submitted in one language and the fee is paid in one currency — Swiss francs.
Tip # 6. Patent where it is necessary
It is necessary to determine in advance the countries you are interested in, since the patent has a territorial effect.

Submit a provisional application for a patent in the United States. The fee for filing such an application ranges from $ 65 to $ 260. If you file your main application in the United States within 12 months, the date of priority will be the date of the provisional application. Thus, you can file a provisional application and securely negotiate with investors, realizing that you have interim protection in the United States for one year. Unfortunately, the opportunity to submit provisional applications is provided only by US law.

File the main application in one of the jurisdictions and declare priority on it within 12 months from the date of filing the application. For example, you can file an application in the Patent Office of the Republic of Kazakhstan, conduct negotiations and within a year apply for a Eurasian patent, US patent, EU patent, and other patents of other jurisdictions.

Or, on the basis of the national application (or apart of it) file an international application provided under the international Patent Cooperation Treaty (PCT). This Treaty provides for the possibility of filing one international application and the establishment of a so-called "reservation of time" to apply in other jurisdictions within 30 (or 31, depending on the particular jurisdiction) months from the date of filing of the first national application. This will allow to secure patent protection for your product or technology at a relatively low cost. And allows you to secure effective protection throughout the globe for 2.5 years.
Tip # 7. Never violate the rights of others
One of the important aspects in launching a product is not even protection, but verification for possible violation of the rights of third parties. After all, your product (whether software or hardware) may violate one or hundreds of patents of others.

To avoid such problems, before the start of the project it is necessary to conduct a patent clearance search, which western experts call Freedom to Operate (FTO) search.

What a startuper should know about FTO

Clarify the status of the patent. A patent must be maintained on a annual basis, and if it is not renewed and can not be restored, the patented technology can be used without violating the rights of third parties.

Given that the patent has territorial effect, a patent for a product in the United States does not prohibit its use by third parties in other jurisdictions. Therefore, it is important to select the right list of countries where you want to obtain protection. As in the situation with Taiwan, which is also called the Republic of China. By the way, it is important to keep in mind that China's patent does not grant exclusive rights to administrative districts — Hong Kong and Macau. And applications filed for patents in France do not apply to French Polynesia.

The search should be carried out not only by the product as a whole, but also by its components. For example, your objective is to launch a new smartphone. In FTO, a search is conducted on the applications and issued patents not only for smartphones but also on their components – processor, memory, wifi modules, etc.

Determine the scope of protection. The scope of protection of the invention is determined by the patent claims. Accordingly, the violation of rights is the use of all the features of an independent claim. For example, if a patented device consists of components A, B, C and D, and your device consists only of A, B and C, this will not be considered a violation of rights.

But even though, according to the findings of the FTO you cannot launch the product to the market, you should not despair. You may contact the patent holder and propose to buy it out, get a license to use the product, and, if you fail to come to an agreement, find options for contesting the patent.
Remember that any intellectual property protection must be consistent and reasonable. Good luck in your endeavors!
Madi Suyundukov
Patent Expert
Nazarbayev University Research and Innovation System