GreyB is a patent research and analytics firm that specializes in assisting companies to use patents as strategic business tools.
This presentation is aimed to inform the Importance of Intellectual Property Rights (IPR) especially for Startups.
Protect an invention in any area of technology which is new, useful, capable of industrial application, and represents an innovative and non-obvious advance.
New plant variety registration (similar to patent) protects a plant variety which is new, possesses uniform and stable basic qualities that remain unchanged after reproduction
Protect a distinctive mark composed of words, images and other signs (as well as sounds and odors in some countries) which indicate the origin of goods or services.
Protect new or original industrial design (outline, shape, model or ornament – such as shoes, bricks, carriage etc.) of a product.
Protects literary, dramatic, musical and artistic works – including computer software.
Intellectual Property Rights- In General
A patent in a territory grants its holder the exclusive right
to make use of an invention in the territory for a limited time
by stopping others from the unauthorized
of the invention
What rights grants a patents?
Registration (Patent Office) required
Protection - 20 years of full monopoly over the patented invention
For new plant variety – registration in Plant Breeders Register -15 years of monopoly
Registration (Trademark Office) required for full protection of exclusive use
Protection - (since 2003) 10 years, renewable indefinitely for 14-year periods
Registration (Patent Office) required for full protection of exclusive use
Protection – 5 years (extendable by 10 years)
Protection from unauthorized copying for author’s lifetime plus 70 years (for phonograms, 50 years)
Know-how / Proprietary Information (Trade secrets)
Protection by tort legislation not limited in time
IPR : Registration and Protection
Importance of IP for startups From Investor perspective To protect own technology To understand the competitive landscape
A potential investor will examine:
the Company’s registered patents, filed patent applications, other registered or unregistered IP assets
the value of the Company’s IP assets
the extent of patent protection
the risk that such patents may be cancelled by court
the chance of patent applications to succeed
the Company’s infringement of third-party IP rights.
Importance of IP for startups IP as Asset for Potential Investors Due Diligence Perspective
Protection currently available for the technology
What patent applications / registered patents currently protect the technology?
Which patents are most important and which, if any, considerably “block” other companies ?
Does the Company’s technology infringe the IP rights of competing companies?
Possibility that competing technologies be licensed to the Company
Procedure of documenting the Company’s know-how upon development – the risks inherent in concentrating all know-how with an individual founder
Are the Company’s trademarks and domain names in use and therefore adequately protected?
What are the chances for the Company’s trademarks to be registered abroad in jurisdictions in which it is not yet operating?
Do customers in the target markets associate the Company’s product with the Company?
The Company’s Technology and Goodwill Importance of IP for startups
What impediments to the market entry of your technology exist?
Who are your competitors?
What are the competitive technologies?
What impact does your invention have on the competitor and the other technologies?
Will new technologies leapfrog yours?
Blocking technology of competitors:
Are you free in your design around the IPR portfolio of your competitors?
Can you license or buy the necessary technology?
What is your strategy in case of a law suite with a competitor who owns a blocking patent?
Evaluate the competitiveness of your technology Importance of IP for startups
IPR strategy Aspects IPR Strategy Element - and what it involves Innovation management Harvesting inventions, tapping their full potentials as to the IP strategic goals IPR Filing Strategy Focus areas for new intellectual property rights (market segment, countries, …) IPR Portfolio Management Management of intellectual property assets as an investment portfolio IPR Asset Managment Patent licensing, sale, exchange or pooling Enforcement and legal strategy Business strategy IPR Environment IPR communication strategy; Influencing future IP laws
Have answers to these questions before filling for patents
What is the concrete purpose of the patent (application)?
Support marketing for selling or creating interest in a product or service
Warn others to provide a similar product or service
Protect your product from being imitated
Block competitors from providing work around solutions
What are the limits of your invention?
Is the idea really new (not published)?
What is the big picture of your invention?
What differentiates it from known competitive technology?
How difficult is it to circumvent the invention?
Innovation evaluation – patent scope
What are the opportunities in foreign markets?
In which countries do you need to protect your technology?
Dealing with EU and US patents essentially differs!
How can you monitor infringements?
What are the monitoring costs?
What is the value of your invention?
Check your business model
Estimate the size of the market affected by the invention
Contemplate costs of the patent application and patent and compare them to the estimated revenue of product sales/licenses
Consider higher initial costs in favor of a higher quality of the patent
Innovation evaluation – value proposition
Traditional models of innovation: competition
Start-ups innovate for entry into product markets and displace incumbents
New models of innovation: cooperation
Start-ups have options to engage in cooperative commercialization (e.g., licensing, acquisitions) rather than compete in product markets
Advantages in saving on duplicative complementary assets or softening of product market competition
Markets for Ideas
Your idea or invention should be:
Remember…………. Statutory requirements to obtain patents
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 priorities – Keep in mind
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
The Next steps- Patent Process
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
The Next steps- Patent Process
Small portfolio of pioneering patents
Market leadership & advantage
Deal & merger leverage
Small to medium size companies
Points to focus in your patent strategy
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
Points to focus in your patent strategy
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
Recommendations for startups
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
For any queries contact
Co-Founder | GreyB
Technology & Patents
(0)9216789067 | (0) 9891272287
[email_address] | [email_address]
Our goal is to help companies develop innovative products and technologies by better
understanding emerging technologies, opportunities and intellectual property strategies.
We strive to provide our clients with practical knowledge and understanding of their IP
landscape which in turn helps them make informed decisions about R&D planning and