What should startups consider regarding intellectual property protection
Sarap & Putk Patent Agency
Estonian Intellectual Property
and Technology Transfer Centre
What to consider regarding IP protection?
About the topic
Why startups & intellectual property
and not just what to consider
regarding company’s IP protection?
DEFINITION of 'Startup'
A company that is in the first stage of its operations. These companies are often initially
bank rolled by their entrepreneurial founders as they attempt to capitalize on developing
a product or service for which they believe there is a demand. Due to limited revenue or
high costs, most of these small scale operations are not sustainable in the long term
without additional funding from venture capitalists.
Read more: http://www.investopedia.com/terms/s/startup.asp#ixzz3a3Qszs7P
Some startup characteristics
• Young & fast growing companies
‒ High risks
‒ Limited resources
‒ Unclear future
‒ Mostly active on emerging markets
• Rapid technological progresses
‒ Software/Internet based products and services
‒ Relatively short product life time
• Unconsidered actions
– Product/service name randomly selected
– Selected product or service name generic, descriptive or
already registered trademark
– Intense pitching & networking
o publishing too early/too much secrets reveled
• No agreements between founders, employees, partners
Some IP characteristics to consider
• What type of IP my company has?
• What is the most valuable IP to protect?
• Who actually owns the IP?
• What is the product life-time?
• How easy is to reproduce or copy my product?
• Where are the main markets?
• What is the business model?
• Who are the competitors?
Some characteristics of new
technologies and business models
• Wearable technologies & sensors
• Autonomous vehicles
• Smart environments, smart machines
• Smart & Self healing materials, Bionics
• Augmented reality
• Big, Open & Linked data
• Virtual & digital currency
• Crowdsourcing, crowdfunding
• User/Client created content
• 3D drawing , scanning, printing, copying
Some myths and mistakes
1. Thinking that you don’t have any intellectual property
2. Thinking that patents are the only intellectual property
3. Relying on one type of intellectual property protection
4. Failing to conduct prior art search
5. I want to patent/trademark it everywhere!
6. Publishing your IP before securing your rights
7. Doing It Yourself
8. No planning - The IP protection is not linked to your business plan
9. Relying on a single patent
10.Failing to create original trademark
11.Believing that nothing is going to happen
12.Requesting everyone to sign NDA
13.Using Outsourcing/Crowdsourcing: Freelancer, 99designs, Kickstarter etc
14.No budgeting - Underspending or Overspending on IP protection
15.Ignoring a Competitor's Patent/Registered trademark or design 6
Some specifics of interdisciplinary IP
• Very broad prior art
More complicated patent applications
• New technologies become rapidly public domain
Inadvertent patent infringing
• Specific jargon
• More and more patent lawsuits
Thinking that you don’t have any IP
Every company has at least:
• Domain name
• Know how,
• Trade secret
See more examples https://oami.europa.eu/knowledge/course/view.php?id=1507
Thinking that you don’t have any intellectual property
Startups & IP strategy
1. How many different
types of intellectual
property belonging to
company i’m S.p.A. can
Who will acquire Jawbone?
Google? Apple? Facebook?
Market leader & IP strategy
Relying on a single patent
P2 P3 Pn P1
P2 P3 Pn
i’m S.p.A. Jawbone/Aliph
Thinking that patents are the only IP
Relying on one type of IPprotection
Patent = Intellectual Property
One single product can be protected for example by: Copyrights, Patent,
Trademarks, Trade secrets; Know-how, Design registrations
Failing to conduct prior art search
- Prior art
- Freedom to operate
- Freedom to use
• Do you have the rights?
‒ Conduct freedom to operate search!
‒ Conduct freedom to use search!
‒ Avoid infringement of other’s IP rights!
Failing to conduct trademark search
Failing to create original trademark
Failing to conduct design search
Evaluation Development Production
Prior art analysis
- New patents
When you may need background searches
I want to patent it everywhere –
The product has global market!
Stop! There is no world-wide patent nor you are going
to commercialize your product in every single country!
No planning - The IP protection is not
linked to your business plan
• Publishing your IP before securing your rights
– Disclosure of the invention
– Publishing a research paper
– Relying on grace-period
• Wrong timing
– Filing too early
– Filing too late
• No budgeting
– Underspending on IP protection
– Overspending on IP protection
The IP protection is not linked to your
Fujitsu: “We are promoting an intellectual property strategy closely integrated with
our business and R&D strategies. ”
Idea Development Production Selling
Who owns your intellectual property?
‒ Check your contracts!
• Raising awareness
• Identify your IP!
• Regulating ownership
• Evaluating your IP
• Patent/Trademark search
(prior art, novelty, FTO, FTU)
• Risk analysis
• Monitoring competitors
• Planning the IP protection according your business plan
• Start protecting your IP step by step!
Sarap & Putk Patent Agency, http://www.patent.ee, email@example.com
Tartu: Margus Sarap, firstname.lastname@example.org, tel 747 7058
Tallinn: Mikk Putk, email@example.com, 53 039 088, Skype: mikkputk
Is the class half empty or half full?
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