Intellectual Property Lawyers for San Bernardino, California

When you're reviewing a Developer Agreement, it’s really important to make sure it covers the basics while also protecting your rights and interests. Here’s a breakdown of what you should look out for in plain terms: Hello! My name is Dolan and I am happy to help. First off, the agreement should clearly describe the scope of work (often called the "SOW") This means it needs to explain exactly what you're expected to do, including the features or functionality of the app, the timeline for delivery, and any milestones. Make it specific. It has to be clear what is defined as intellectual property and then who owns it. Compensation is another big one. The agreement should spell out how much you’re being paid, whether it’s a flat fee, hourly rate, or based on milestones. I Confidentiality clauses are pretty standard, but you’ll want to make sure they don’t go overboard. Termination clauses are also super important. These should say under what conditions either of you can end the agreement. Make sure that if the company decides to end things early, you’ll still get paid for the work you’ve done up to that point. We can always draft these things for you or look over what you've drafted. Best of luck! Dolan

Hello! Thank you for posting this question. In your case, the other party may claim that you are infringing on their trademark, but proving it is a different case. The Lanham Act provides for a cause of action for infringement of both registered and unregistered trademarks. (15 USC Section 1114(1)(a); 15 USC Section 1125(a)(1)A).)  The 9th Circuit Court of Appeals has laid out some elements to help determine whether it creates an infringement lawsuit. 1. The complaining party has to prove they have a valid, protectable trademark and that they own that trademark; 2. The complaining party must prove that a mark is similar, and it was used without the consent of the moving party in a manner that is likely to cause confusion among ordinary consumers as to the source, sponsorship, affiliation, or approval of the goods.  The likelihood of confusion can occur at the time of the sale, when there is initial interest by a consumer, or even after the sale, if the confusion causes a consumer to no longer buy a service or product connected to the mark. The court considers things like the strength of the original mark, whether you are using it for some fair use purpose, the similarity, the proximity of the products and marketing channels, whether there’s actual confusion, the defendant’s intent, the quality of respective products, and the sophistication of the customers. (Polaroid Corp. v. Polard Elecs. Corp. 287, F.2d. 492, 495 (2d Cir. 1961.) So what this means is that it'd have to be litigated, but you can argue you are not trying to sell products or services using their mark, but rather you are using it for some other purpose, such as to educate people about their business practices. Best of luck!

As a legal entity, a joint venture (JV) can own a patent. Given the temporary nature of JVs and the fact that there will be multiple owners of any patents, there is a complex mix of intellectual property (IP) ownership rights, dispute resolution, and enforcement issues that need to be agreed upon in order to properly protect everyone's intellectual property rights. Consideration will need to be given to what IP ownership and rights will look like during and after the JV and it may be easier to have both companies listed as the patent authors for inventions from the outset (versus naming the JV as the author). A joint IP agreement is the best solution to outline the rights of each party, the process for developing patentable technologies sufficient to be a patent author, filing and prosecuting patents, and future licensing and exploitation of the patent.

You’re not the first to confuse a KISS Note with intellectual property protection, and you definitely won’t be the last. It’s a common mix-up in the startup world. But here’s the truth: A KISS Note has nothing to do with protecting your software. It’s a financing instrument created by 500 Startups, designed as an alternative to convertible notes and SAFEs for early-stage fundraising. It’s a way for investors to give you money now in exchange for equity later. It does not offer any legal protection for your code or ideas. So What Do You Actually Need to Protect Your IP? If you're building software in California, there are several key legal tools you’ll want to have in place. Start with the ones that offer immediate protection and work your way toward longer-term strategies. Always Start with NDAs If you're showing your software to anyone (whether it's a co-founder, a contractor, an investor, or a beta tester) you need a solid non-disclosure agreement in place before you share anything. It’s your first line of defense, especially if you want to preserve trade secret protection. Your NDA should spell out exactly what you consider confidential. This might include your source code, algorithms, user data, business plans, or any other proprietary information. The agreement should also state how long confidentiality lasts and what the other party can and cannot do with your information. One important note here: California law prohibits non-compete clauses under Business and Professions Code Section 16600. Do not include one in your NDA. It won't be enforceable. Instead, focus strictly on confidentiality and use limitations. Copyright is Automatic, but Registration Matters As soon as you write your code, it’s protected under federal copyright law. That protection applies to the actual expression (the specific code) not to your underlying ideas, functionality, or algorithms. Even though protection is automatic, registering with the U.S. Copyright Office gives you significant legal benefits. You can’t file a federal lawsuit without registration. And if your copyright is registered before infringement occurs, you may be eligible for statutory damages of up to $150,000 per work and recovery of attorney’s fees. The process usually costs between $65 and $85 and takes a few months. Trade Secrets Require Real Effort to Stay Protected If your software includes proprietary algorithms, confidential processes, or unique technical methods that provide a competitive edge, you may be eligible for trade secret protection under the California Uniform Trade Secrets Act. But here’s the catch. That protection only lasts as long as you actively protect the information. This includes limiting access to your source code, using secure development environments, marking documents as confidential, and having everyone involved sign NDAs. You need to treat your trade secrets like actual secrets if you want the law to do the same. Considering Patents? Proceed Carefully Software patents are complex, especially following the Supreme Court’s 2014 Alice decision. You can’t patent abstract ideas, mathematical formulas, or generic computer processes. Your software needs to solve a specific technical problem in a novel, non-obvious way or improve the functionality of a computer system itself. If you've developed something truly unique — like a new data compression algorithm, a better machine learning architecture, or a new way to optimize networking — a patent might be worth exploring. Just keep in mind that the process is expensive, often costing $10,000 to $15,000 with legal fees. It can also take several years. Many software companies choose to rely on trade secrets and copyrights instead. How to Put All of This Into Practice Begin with what you can implement right away. Create a strong NDA template and use it consistently. Register your copyright as soon as your codebase is developed enough to be meaningful. Protect your trade secrets by putting real technical and legal safeguards in place. Track your development process carefully. Version control, timestamps, and contributor logs can all serve as useful evidence in a legal dispute. If you’re working with employees or contractors in California, be especially cautious. The state has employee-friendly laws, so your contracts must clearly state that all work product belongs to your company and that all confidential information stays confidential. When Should You Talk to a Lawyer? Once you’re dealing with patents, investor negotiations, infringement threats, or user data privacy, it’s time to bring in professional legal help. These are complex areas, and the risks are too high to wing it.

Invention Assignment Agreements usually require employees to hand over rights to any inventions they come up with during their employment. But things can get tricky when the agreement tries to claim ownership of something you created on your own time using your own resources. What’s Generally Enforceable Employers often write these agreements in broad terms, sometimes trying to cover anything you invent while you're employed, even if it’s unrelated to your job. Courts usually uphold fair agreements, but they’ll look closely at anything that seems to overreach. Most states try to strike a balance. If an invention is directly tied to your work or the company’s business, the employer may have a valid claim. But if it’s something truly independent that you built on your own time without company tools or knowledge, you’re more likely to keep it. State Laws That Protect Employees Some states have gone further and passed laws that give employees more protection. California’s Labor Code § 2870 is probably the most well-known. It says employers can’t force you to assign inventions that were developed entirely on your own time without using any company resources. The exception is if the invention is connected to the company’s business, research, or your actual job duties. Other states like Washington, Illinois, Delaware, Minnesota, and North Carolina have similar laws. New York passed its own version in 2023, called Labor Law § 203-f, which follows California’s lead. Most of these laws also require employers to give written notice to employees about their rights. In states without specific laws, courts typically rely on general contract principles and public policy. If a contract tries to claim every idea you’ll ever have, that language probably won’t hold up. But if the invention overlaps with your employer’s field, even if you built it at home, the company could still have a real claim. When Employers Still Have Rights Even with legal protections, there are a few situations where the company can still argue ownership: 1. If the invention is related to the business or current projects. 2. If you used any company tools, software, workspace, or confidential info. 3. If the invention came out of your assigned job duties, even if you worked on it after hours. These carve-outs are broader than most people realize. For example, if you’re a software engineer and your side project uses the same coding language or solves a similar problem as your employer’s product, that could raise red flags, even if you used your own laptop at home. How to Protect Your Own Inventions If you want to make sure you keep the rights to something you’ve created, documentation is key. Keep records of when you worked on it, what tools you used, and how it relates (or doesn’t relate) to your job. Don’t use your work email, computer, or cloud storage. And read your agreement carefully. Some contracts require you to disclose all inventions, even personal ones. Disclosure doesn’t always mean you have to assign it, but it can start a conversation you’d rather avoid. The Shop Right Rule Even if you own your invention, your employer might still be able to use it under what’s called the “shop right” doctrine. This means that if you used company time, tools, or resources, the company may have a free, nonexclusive license to use your invention in its operations. You’d still own it, but you couldn’t stop them from using it. Why Jurisdiction Matters The state where you work usually controls which laws apply to your agreement, not the state where your company is based. That can make a big difference. For example, engineers in California have strong statutory protections. Employees in Texas may need to rely on general contract law instead. The Final Analysis Your best move is to have an employment attorney review your agreement. The details matter, and so does your state's law. A good attorney can explain what's enforceable, help you negotiate better terms (like explicit carve-outs for personal projects), and show you how to protect your own work without violating your contract. If you're looking for this type of guidance, the attorneys on Contracts Counsel are available to help. Whether you need a quick contract review or full representation, you can connect with experienced employment lawyers who understand the nuances of invention assignment agreements in your state.