Demystifying IP/Patent Process for Startups [Part 2]

Concluding part of the series on “Demystifying IP/Patent Process for Startups“(amazing discussion going on in there), by Dilip of Inolyst,IP consulting and IP monetizing firm.

Understanding Patent Priorities

Keep in mind the following points:

  • What to patent
  • potential commercial products of company
  • methods of making and using the products
  • systems utilizing the company’s products
  • made by company’s customers
  • parts of your product made by vendors
  • commercially important inventions
  • blocking patents to block competitors

Patent Process

  • Identify new and unobvious ideas
  • Prepare invention disclosure
  • Forward disclosure to patent committee
  • Committee decides whether to pursue invention
  • Patent drafter prepares first draft of application
  • Inventor reviews & revises draft
  • Patent drafter sends final draft to inventor
  • Inventor provides copies of material prior art to patent attorney
  • Inventor signs assignment and declaration
  • Assignment signature is notarized
  • Patent attorney files application and forms in patent office
  • Application is examined by patent office

Points to focus in your Patent Strategy

  • Small portfolio of pioneering patents
  • Market leadership & advantage
  • Licensing
  • Deal & merger leverage
  • Small to medium size companies
  • Reasonable cost
  • Market monitoring
  • Large portfolio of patents of various scope
  • Protect products from copying
  • Cause competitor design around
  • Reduce risk of patent infringement suit by competitors – mutually assured destruction
  • Cross licensing – market entry
  • Medium to large size companies
  • High cost

Recommendations for startups

General recommendations

  • focus on few quality patents regarding key products and technologies in conformance with business objectives
  • cost-effective high-quality patent portfolio
  • indicator for superior technology and to be expected higher turnover growth rate
  • decisive to be funded by venture capitalists
  • quantity not relevant
  • regular and systematic patent filing to build a strong patent position
  • seek fast patent grants (avoid slower PCT-route)
  • US venture capitalist usually pass on start-ups with long lasting patent infringement suits

Conclusions

  • Patents are of vital importance to the commercial success of techno start-ups
  • A patent is a shield for competitors
  • A patent gives a strong position to negotiate with investors, an investor provides the conditions for a swift growth
  • Licensees

More Legal resources for startups