patent strategies for startups by lang mchardy
DESCRIPTION
TRANSCRIPT
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
