Patent Strategies For Startups

Patent Strategies For Startups

What Do We Mean By “Startup”

• Not just a smaller Big Company

• Not Yet Profitable?

• Venture or Angel Funded?

• Working Towards An Exit?

• Searching For A Business Model

• Developing New or Improved Technology

2

What Do We Mean By “Strategy”

• Business Strategies (not legal)

• Answer questions like:

• Why file patents?

• Which inventions are patent-worthy?

• When is the right time to file?

• Can’t we just stay out of the patent game?

3

First, the Bad News

• Patents are Un-Avoidable for Startups

• Software Patents Aren’t Going Away

• Neither are Patent Trolls

4

Guiding Principle

• Preserve Patent Value

• These Are Not Your Patents

• They Belong to Your Future Acquirer

• You Probably Won’t Enforce Them

• You Probably Won’t License Them

• But They Can Create Value

5

How Do Patents Create Value For Startups?

• Make Technical Developments Tangible

• Increase Leverage With Partners

• Stimulate Investment

• Stimulate Acquisition

6

Have a Solid Strategy

• File the right patents

• File early enough

• Assess freedom to operate

• Don’t Stop Until You Exit

7

Choosing The Right Inventions

• How Patentable Is It?

8

Too Broad

Too Specific

NotPatentable

NotValuable

Patentable &

Valuable

Choose Value Over Patentability

9

Higher Value

Lower Value

LessPatentable

MorePatentable

Probably File

DefinitelyFile

Definitely Don’t File

ProbablyDon’t File

Assessing Invention Value

• Assess Value To The Business

• Core to Business

• Others Need it

• Alternatives Exist

10

When To File

• File As Soon As Value Is Clear

11

IdeaPrototype Working

ProductProof of Concept

Public Disclosure

When To File

• Disclosures Create Deadlines

12

IdeaPrototype

Too Late To File in U.S.

Too Late To FileOutside U.S.

Working Product

Proof of Concept

One Year

Public Disclosure

When To File

• File Early

13



File First Provisional

One Year

One Year

File U.S. Non-Provisional

& PCT



Public Disclosure

When To File

• File Often

14



File First Provisional

File Second Provisional

One Year

One Year

File U.S. Non-Provisional

& PCT



Public Disclosure

Tips on Timing

• File Early & Often

• Re-Assess Value Frequently

• Don’t Wait For Perfection

15

Where To File Internationally

• Can Be Very Expensive

• Don’t Overlook Future Fees

• Use PCT to Delay

• File In The Largest Markets First

16

What If The Business Pivots?

• Re-Assess Freedom To Operate

• Re-Assess Value of Filed Patent Applications

• Abandon or Sell Non-Core Applications

• File Continuations to Follow Pivot

• Seek New Inventions

17

Final Points

• Preserve Value For Your Successors

• File Early & Often

• Assess Value Continuously

• Regularly Seek Out Inventions

• Always Keep A Continuation Pending

18

Questions?

19

Lang McHardy

[email protected]

www.VestedIP.com