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Patent Strategies for Startups by Lang McHardy

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Patent Strategies for Startups by Lang McHardy

  1. 1. Patent Strategies For Startups
  2. 2. 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
  3. 3. 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
  4. 4. First, the Bad News • Patents are Un-Avoidable for Startups • Software Patents Aren’t Going Away • Neither are Patent Trolls 4
  5. 5. 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
  6. 6. How Do Patents Create Value For Startups? • Make Technical Developments Tangible • Increase Leverage With Partners • Stimulate Investment • Stimulate Acquisition 6
  7. 7. Have a Solid Strategy • File the right patents • File early enough • Assess freedom to operate • Don’t Stop Until You Exit 7
  8. 8. Choosing The Right Inventions • How Patentable Is It? 8 Too Broad Too Specific Not Patentable Not Valuable Patentable & Valuable
  9. 9. 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
  10. 10. Assessing Invention Value • Assess Value To The Business • Core to Business • Others Need it • Alternatives Exist 10
  11. 11. When To File • File As Soon As Value Is Clear 11 Idea Prototype Working ProductProof of Concept Public Disclosure
  12. 12. 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
  13. 13. 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
  14. 14. When To File • File Often 14 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
  15. 15. Tips on Timing • File Early & Often • Re-Assess Value Frequently • Don’t Wait For Perfection 15
  16. 16. Where To File Internationally • Can Be Very Expensive • Don’t Overlook Future Fees • Use PCT to Delay • File In The Largest Markets First 16
  17. 17. 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
  18. 18. Final Points • Preserve Value For Your Successors • File Early & Often • Assess Value Continuously • Regularly Seek Out Inventions • Always Keep A Continuation Pending 18
  19. 19. Questions? 19 Lang McHardy Lang@VestedIP.com www.VestedIP.com

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