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…

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

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