Tales from an ip worker in consulting and software
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Greg Makowski, an IP expert in consulting and software, discusses the motivations for IP retention and challenges faced in developing software frameworks during his panel at the Washington State Bar Association. He outlines the importance of retaining IP throughout repeated consulting projects and the implications of open source software and prior invention clauses in employment contracts. The document highlights strategies for protecting IP and maximizing its value through consulting and product development.
Tales from an ip worker in consulting and software
- 1. Tales from an IP Worker in Consulting and Software By Greg Makowski, on Wed 9/12/2018, Invited Panel speaker for “Real World Intellectual Property Issues and Opportunities” Continuing Legal Education seminar, entitled “IP for the Rest of Us.” At Washington State Bar Association Conference Center in Seattle. https://www.wsba.org/news-events/events-calendar/2018/09/12/default-calendar/intellectual- property-(ip)-for-the-non-ip-lawyer-cle 1
- 2. Outline This IP Worker is an example IP Prospect in Consulting & Software Motivation for IP Retention in Spectrum of Consulting Software IP Challenges for Releasing a Framework Open Source Software & Licenses IP Challenges when being hired - clauses on Prior Inventions 2
- 3. This IP Worker is an Example IP Prospect in Consulting and Software Greg Makowski, Head of Data Science Solutions (team of 10) FogHorn Systems (Industrial IoT startup, Series B) Worked at 7 startups, 3 exits or acquisitions Deployed 90+ data mining models since 1992 (consulting/startup) 8 Enterprise or SaaS applications with automated mining One provisional patent application www.LinkedIn.com/in/GregMakowski 3
- 4. Motivation for IP Retention in Spectrum of Consulting Software Startup Valuation = 1 * (consulting revenue) + 10 * (software revenue) ”Intelligence Augmentation” is using AI to complement a job function Automate the “boring stuff”, help humans to be strategic The “IP worker” enables “knowledge workers” with IA Want to build software and IP Customer lead, product driven Get a Minimum Viable Product (MVP) out to test quickly in the market 4
- 5. Motivation for IP Retention in Spectrum of Consulting Software IP Evolution over repeated consulting over similar repeated projects (ONLY IF RETAIN SOME IP OVER PROJECTS) 1-2: investigate, eliminate dead ends, get something working 3-4: consultants build general functions to leverage over clients 5+: may develop a “framework” for internal or external consultants 7+: organically “grow a product” with GUI and back end 5
- 6. Motivation for IP Retention in Spectrum of Consulting Software IP Evolution over repeated consulting over similar repeated projects (ONLY IF RETAIN SOME IP OVER PROJECTS) 1-2: investigate, eliminate dead ends, get something working 3-4: consultants build general functions to leverage over clients 5+: may develop a “framework” for internal or external consultants 7+: organically “grow a product” with GUI and back end Alternate, speeding up the process: 1-2 concurrently: reduced consulting rate for “customer development partners” focus on 80% overlap Custom work for corner cases is at the full rate 6
- 7. Motivation for IP Retention in Spectrum of Consulting Software RETAIN SOME IP OVER PROJECTS, Analogy: We will develop your worksheet system with your data, charts and functions. You keep your worksheet and anything related to your data is only for you We keep code for vertical independent functions, like Excel formulas Up front clause in Statement of Work contract with client IP Ownership: The STARTUP has code building blocks for creating your applications on the The STARTUP platform. As a customer you will pay for our service to assemble, test and receive an annual license to use this code. The STARTUP will support and maintain this code during the license period. All data collected is exclusively the property of the customer. The STARTUP would retain IP on processes and code like automated cluster creation and outlier alert description generation. 7
- 8. IP Challenges for releasing a framework A “software framework” could be Bought by other System Integrators (SI) for one client deployment The SI integrates many systems together Is mostly “source code” + documentation aimed at the SI SI may be common way to enter other countries IP Challenges and attempted solutions 8
- 9. IP Challenges for releasing a framework A “software framework” could be Bought by other System Integrators (SI) for one client deployment The SI integrates many systems together Is mostly “source code” + documentation aimed at the SI SI may be common way to enter other countries IP Challenges and attempted solutions Can try to protect IP of source code with contract Can “obsfucate code” to add effort for SI to rework Can trademark main code with Federal Registration on “meaning” Add trademark notice at top of files. Removal proves intent. https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf 9
- 10. Open Source Software & Licenses Search for “The Cathedral and the Bazaar pdf” for motivation of OSS Cathedral – top down development by declaration Bazaar – bottom up, self organizing Can be easier for one of 400 part time people to find and fix a bug than a mandated team of 6 http://www.unterstein.net/su/docs/CathBaz.pdf Open Source Licenses https://en.wikipedia.org/wiki/Open-source_license https://en.wikipedia.org/wiki/Comparison_of_free_and_open- source_software_licenses Apache Software Foundation https://www.apache.org/ 10
- 11. IP Challenges when Being Hired: Clauses on Prior Inventions Normal: List “prior inventions” with appendix pages as part of hiring contract If employee uses prior inventions at the company, company can use going forward with no constraints Employee can still use IP at future companies Too aggressive, walk away: If employee uses at company, employee can never use elsewhere in future companies May happen at big companies not used to prior inventions 11