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
Not
Patentable
Not
Valuable
Patentable
&
Valuable

Choose Value Over Patentability
9
Higher Value
Lower Value
Less
Patentable
More
Patentable
Probably
File
Definitely
File
Definitely
Don’t
File
Probably
Don’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
Idea
Prototype Working
ProductProof of
Concept
Public
Disclosure

When To File
• Disclosures Create Deadlines
12
Idea
Prototype
Too Late To
File in U.S.
Too Late To File
Outside U.S.
Working
ProductProof of
Concept
One Year
Public
Disclosure

When To File
• File Early
13
Idea
Prototype Working
ProductProof of
Concept
File First
Provisional
One Year
One Year
File U.S.
Non-Provisional
& PCT
Too Late To
File in U.S.
Too Late To File
Outside U.S.
Public
Disclosure

When To File
• File Often
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Idea
Prototype Working
ProductProof of
Concept
File First
Provisional
File Second
Provisional
One Year
One Year
File U.S.
Non-Provisional
& PCT
Too Late To
File in U.S.
Too Late To File
Outside U.S.
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
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Questions?
19
Lang McHardy
Lang@VestedIP.com
www.VestedIP.com