IP Protection and Legal Steps For Early Stage Companies

December 3, 2019

Speaker Slides

IP Dos and Donts for Startup Companies

J. Peter Fasse, Principal at Fish & Richardson P.C.

Critical Legal Issues for Early Stage Startup Companies

Kraig Hitchcock, Gesmer Updegrove LLP

Startups –Tips for Navigating Your Company to Success

Shawn Foley, Of Counsel, Burns & Levinson

ENET’s panel of legal experts will discuss fundamental legal issues that founders and executives of early stage companies must address to insure vital protections and the building of value.  These issues are compounded by changes in technology, commerce, and the law.

  • What is the preferred form of entity and where should it be established?
  • What is the preferred method to protect the company’s Intellectual Property by use of various forms of patent, copyright, trademark, and trade secrets, either alone or in combination?
  • How should founders’ equity be apportioned through stock options and what restrictions should apply?
  • What compensation and benefits should be included in employee agreements including consideration of Non – Disclosure Agreements, the changing environment for Non – Compete Agreements, as well as Assignment of Invention Agreements?

These issues and their benefits and pitfalls will be discussed and presented with you, the business professional, in mind.


6:30-7:30 PM – Registration & networking

7:30-7:40 PM – ENET Chairman’s announcements

7:40-7:55 PM – eMinute – Up to 3 Startup companies’ presentations

7:55-8:45 PM – 3 expert speakers on the night’s topic

8:45-9:00 PM – Audience / Speakers Q & A

9:00-9:30 PM – Final networking includes meeting presenting speakers

A question and answer session follow the presentation, and panelists will be available afterwards for responses to individual questions. As with every ENET meeting you will also get the chance to network with the panelists and other meeting attendees, both before the start of the meeting and afterwards.


J. Peter Fasse, Principal at Fish & Richardson P.C.

Peter Fasse is a Principal in the Boston office of Fish & Richardson, and has been working at Fish since 1987. Peter has two B.S. degrees from MIT, in Life Sciences and Bioelectrical Engineering. His practice emphasizes client counseling, opinion work, and patent prosecution in a wide variety of technologies, with an emphasis on healthcare, medical devices, and other biomedical fields plus various “green” technologies. Peter helps clients from start-ups to multinationals to develop competitive worldwide patent strategies and to establish solid and defensible patent portfolios. He performs competitive patent analyses, identifies third-party patent risks, and provides patentability and freedom-to-operate opinions. Peter also has experience in opposing and defending patents before the European Patent Office and in U.S. litigation and post-grant proceedings. Peter has experience in various fields including medical therapeutics, diagnostics, devices, imaging, microfluidic systems, RNAi and CRISPR therapeutics, dendritic cell- and DNA- based vaccines, liquid biopsy, engineered AAV systems, next generation sequence analysis, cell culturing and bioprocessing, nanoparticle and vector-based delivery, wind and solar power, optics, and lasers.

Kraig Hitchcock, Gesmer Updegrove LLP

Kraig Hitchcock is a corporate attorney with significant experience representing emerging and established companies.  He obtained a B.A. in History in 1996 from Boston College and a J.D. from Boston College Law School in 2002 and he is admitted into the courts of Massachusetts.  Kraig advises clients on matters ranging from corporate governance, equity and debt financings, mergers & acquisitions and general corporate matters.  He strives to ensure that every client gets sound advice and practical solutions to the complex decisions they face.  Clients turn to Kraig for counsel on shareholder and capitalization matters, equity compensation, financings, employment contracts, corporate governance and customer and vendor agreements.  He frequently advises clients on sales and purchases of businesses and minority investment transactions.  Prior to joining Gesmer Updegrove, Kraig was a corporate associate at Ropes & Gray LLP in Boston, where his practice focused on corporate transactions, financings, securities work and general corporate matters.

Shawn Foley, Of Counsel, Burns & Levinson

With more than 30 years of experience in the field, Shawn Foley brings refined legal and advocacy skills and technical versatility. His approach to patent procurement is practical, cost effective, distinctly business-oriented and personable. Prior to joining Burns & Levinson, Shawn played an integral role in developing his previous firm’s practice in life sciences and pharmaceuticals. A wide spectrum of clients with diverse technologies and business needs have sought his counsel, including major pharmaceutical and personal care companies, medium-sized brand and generic drug companies, start-ups, universities, and entrepreneurs, both in the U.S. and abroad. Shawn began his career as an examiner with the U.S. Patent Office, where he reviewed patent applications during the emergence of the biotechnology field. After an initial 2-year stint with a leading Southeastern IP firm, he gained valuable corporate experience as counsel for a leading diversified chemical company where he worked on a daily basis with management and scientists in both pharmaceuticals and in Ag-Bio. Since joining Burns & Levinson, Shawn has focused on immunotherapy including traditional small molecule-based approaches and more contemporary biological approaches such as CAR-T therapy.  Thus, Shawn has experienced many different aspects of the patent system. Shawn is admitted in Massachusetts, New Jersey and North Carolina Bars.

Moderator and Speaker:

Bob Weber, Managing Director, Patent Kinetics, LLC

Bob Weber is an intellectual property professional, inventor, serial entrepreneur, senior executive, and management consultant. Presently, he is Managing Director, Patent Kinetics, LLC, a company that helps entrepreneurs and patent owners build and monetize valuable patent portfolios. Weber is an inventor with 28 issued US patents and a number of foreign counterparts assigned to Intertrust Technologies where he served as SVP Business and Technology Strategy, 1996-1999.  The Intertrust portfolio was characterized in the Wall Street Journal as a “once in a generation billion-dollar licensing opportunity.”  Weber has also been a Principal Consultant at Northeast Consulting Resources, Inc.  At NCRI, his consulting practice focused on strategies for information creation, access and distribution; clients included Fortune 50 companies.  Weber divides his time between Silicon Valley and Boston.  He served on the Advisory Board of the IEEE Boston Entrepreneurs Network (“ENET”) at various times between 2004 until June, 2019.  Weber has been a member of the Silicon Valley Chapter of the Licensing Executives Society since 2010 and presently serves on the chapter’s Board of Directors and Program Committee.  Weber also served on the organizing committee for the ConnectedThings2015 and ConnectedThings2016 IoT conferences produced by the MIT Enterprise Forum.

Co-Meeting Organizers:

William R. Byrnes

Bill’s legal practice assists entrepreneurial companies with the legal issues they face with a focus on day-to-day commercial issues involving customers, vendors, and other third-party relationships.  Bill received his undergraduate degree in English Literature and Creative Writing from Boston University, a J.D. from Suffolk University Law School, and a L.L.M. degree in Taxation from Boston University Law School, Graduate Tax Program.  He is also a Boston Entrepreneurs’ Network board member.

William Mansfield, Secretary Of Boston ENET

Attorney Mansfield is a patent attorney and is a lawyer in MA & NY; high bar exam scores allowed him to waive into the D.C. Circuit.  He won the CALI Award for perfect grades in an IP course, and he has passed the Fundamentals of Engineering Exam covering all types of engineering.  He assists clients with corporate and intellectual property law using trademarks, trade dress, copyrights, licensing, patents, trade secret protection, strategic partnerships, and succession planning.

From 2004, he has worked on legal matters & he has counseled entrepreneurs/startups since 2009 thru Mansfield Law.  He has worked on patent prosecution, especially business method, business process, electrical, mechanical, telecommunications, and e-commerce patents.  He has filed for global IP protection and has a network of foreign IP professionals.

E-Minute Presentations will be given at the start of the meeting. These very short presentations enable young startup entrepreneurs to gain experience in presenting their summary business plans to expert panels and audiences.

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