patent strategies for startups by lang mchardy

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

LessPatenta

ble

MorePatentable

Probably File

DefinitelyFile

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

IdeaPrototy

peWorkin

g Product

Proof of

Concept

Public Disclosu

re

When To File• Disclosures Create Deadlines

12

IdeaPrototy

pe

Too Late To File in U.S.

Too Late To FileOutside U.S.

Working

Product

Proof of

Concept

One Year

Public Disclosu

re

When To File• File Early

13

IdeaPrototy

peWorkin

g Product

Proof of

ConceptFile

First Provisio

nal

One Year

One Year

File U.S. Non-

Provisional & PCT

Too Late To File in U.S.

Too Late To FileOutside U.S.

Public Disclosu

re

When To File• File Often

14

IdeaPrototy

peWorkin

g Product

Proof of

ConceptFile

First Provisio

nal File Second

Provisional

One Year

One Year

File U.S. Non-

Provisional & PCT

Too Late To File in U.S.

Too Late To FileOutside U.S.

Public Disclosu

re

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

Lang@VestedIP.com

www.VestedIP.com