Articles and Resources


As the Comment Period for Regulation A Proposed Rules Draws to a Close, the SEC Has Received Few Comments

Seth R. Ogden, Ph.D., Andrew M. Holtman, Ph.D., and Scott J. Popma 


Backers with Benefits: Why Companies Are Outsourcing to Kickstarter

MIT Technology Review
February 11, 2013

This article from MIT Technology Review discusses how larger companies, not just start-ups, are using crowdfunding sites for more than fundraising. Scott J. Popma  provided commentary on addded benefits of crowdfunding. “Crowdfunding is the ultimate form of consumer research,” he said. “You are not just asking people’s opinions—you are getting opinions with their money.”

Playing to the Crowd

IAM Magazine
September 2013

This article from IAM Magazine discusses crowdfunding for start-ups and investors. According to Scott J. Popma, “IP is often the most valuable intangible asset” for start-ups. In the article, he provides insights into intellectual property factors for start-ups considering crowdfunding and encourages them to plan for intellectual property protection in the early stages. "They need to have a strategic vision of their IP plan and understand how they are going to use that to compete with other players in their space,” he said. 

Your Creative, Open Hackathon Is Ripe for Ownership Disputes
July 22, 2013

This article explores the intellectual property legal challenges that may arise in a Hackathon. We reviewed publically available agreements from major open hackathons held in the United States in the past year to identify three areas of concern: indemnification, downstream risks, and conflicting agreements. We discuss the potential liabilities of hosts and participants recommend steps to structure agreements to minimize risk.

Freedom to Operate Analysis Could Be Key to Crowdfunding Success

BNA's Patent, Trademark & Copyright Journal

May 31, 2013

Crowdfunding has launched more than twenty projects that cross the million dollar threshold. As a result of transparency rules, however, crowdfund offerings make these high value projects a target for future patent litigation. Potential competitors easily can monitor its technology space and learn, inter alia, the technical details of any proposed product, the supportersbacking the project, unit pricing, launch dates, and, when the fundraising round for the project will close. These details enable a patent owner to evaluate infringement scenarios and prepare a complaint that will be ready to file when the crowdfund project closes. This article explores steps a crowdfunder can take to ensure freedom to operate as well as minimize the possibility of a patent infringement lawsuit.

Changes in the Gaming Industry Call for New Strategies for Intellectual Property Protection and Enforcement


April 19, 2013

The gaming industry is changing rapidly. The emergence of open source gaming consoles, the increasing popularity of mobile gaming platforms, and tools such as crowdfunding and crowdsourcing, are all working to decrease market entry barriers. These same factors, however, threaten to cause price erosion, creating a need for non-traditional revenue streams. To compete in this environment, gaming companies must update their intellectual property ("IP") strategies to protect their brands and technology and to protect and diversify revenue streams.

Patent Valuation During a Crowdfund Offering

Financier Worldwide

September 25, 2012

For science and technology-based startups, intellectual property often is a company's most valuable asset. The valuation of that intellectual property can be a challenging process, one that often lacks transparency. The newly enacted CROWDFUND Act (the Act), which legalises in the United States the sale of crowdfunded securities through authorised internet portals, requires companies to disclose how they value those securities and the assets behind them. This article explores the strengths and weaknesses of traditional patent valuation techniques and how data made public under the reporting requirements of the Act may improve the accuracy and transparency of the patent valuation process.

Best Practices for Preserving Patent Eligibility During a Crowdfund Offering

Bloomberg Law Reports

September 14, 2012

As businesses prepare to launch crowdfunding campaigns, they should take special precautions not to give away the same ideas they are raising money to develop. The recently enacted Crowdfund Act requires that a crowdfunded security offering provide ‘‘a description of the business of the issuer and the anticipated business plan of the issuer’’ and ‘‘a description of the stated purpose and intended use of the proceeds of the offering sought by the issuer.’’ Such disclosures may later render an invention unpatentable if they contain a description of a new inventive concept. Similarly, grace periods may be triggered and patent rights may be barred if the crowdfunding campaign includes a pre-sale or promotional give-away of a product. This article by Finnegan partner Scott J. Popma and attorney Elizabeth A. Shah, provides strategies and best practices for preserving patent eligibility during a crowdfund offering under both the current patent laws and the new patent provisions scheduled to take effect in March 2013.

Could Crowdfunding Jeopardize Eligibility for Reduced Patent Office Fees?

Bloomberg Law Reports

September 14, 2012

One of the advantages Congress has afforded small businesses is a 50-75 percent reduction in Patent and Trademark Office fees for qualified ‘‘small’’ or ‘‘micro’’ entities. These savings can be very important for companies with tight operating budgets. Determining whether your business qualifies may not be easy—and an incorrect determination could lead to a charge of fraud on the patent office, with the potential loss of patent rights. In this article, the authors, Finnegan partners Robert A. Pollock, Ph.D. and Scott J. Popma, discuss the upcoming implementation of the Crowdfund Act and examine the question: If a small business qualifies for reduced patent office fees, can it lose this benefit—or even put its patent portfolio at risk—by raising capital through crowdfunding?

How to Protect Your Intellectual Property When Using Crowdfunding

Corporate Counsel

September 5, 2012

The Bayh-Dole Act (“the BDA”) presents unique concerns for crowdfunded businesses that have ties to universities or have accepted government funding. What steps should be taken to ensure that the business has clear title to its IP rights, and what should be disclosed to potential investors to inform them of the Government’s rights to the invention? This article by Finnegan partner Scott J. Popma and attorney Elizabeth A. Shah, explores what steps should be taken to ensure that the crowdfund offering complies with the requirements of the BDA.

Bayh-Dole: Statute, Regulation and Implications for Government Contractors

Journal of Intellectual Property Law & Practice,

July 2012

A comprehensive overview of the Bayh-Dole Act, which was passed in 1980 to facilitate the transfer of inventions arising from federally funded research to the private sector.