“Innovation is the central issue in economic prosperity” -Michael Porter
There are several challenges for a start-up company, including developing a viable product or service, business development, employee recruitment, business value creation, tackling competition from bigger companies and new entrants, technological advancement and also managing legal and regulatory compliances. Typically start-ups are flooded with recommendations and advice from friends, peers, mentors and investors about business challenges and patent strategy they should follow.
One of the expensive mistakes a start-up entrepreneur can make is messing up their intellectual property right policies. Irrespective of size of the company, effective and diligent IP portfolio management is vital for any emerging company. Bigger companies have the resources to address IP issues with relative ease, but what about start-up company? Are the filing strategies for start-ups different from that of established enterprises? Should start-ups wait for venture capitalists to fund their patent filings? Should they focus on business development or prioritize patent protection? Should they wait for patent protection till they have conducted enough customer discoveries?
Patent rights are important because they create a legal barrier to competition, important drivers of risk reduction, adding value to business and for raising seed or venture funding by licensing or transferring IP rights. A start-up needs to manage its own IP rights while avoiding the IP rights of others.
According to WIPO, “A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application.”
First thing we need to understand start-ups usually have a tighter budget to address IP issues. In addition, filing strategies differ for start-ups and bigger companies. The key difference is that, the latter have a validated business model, products in the market, qualified customers and established new product development channels. Whereas, the former should validate the actual paying customers who will buy the product or technology within start-up’s business framework. If the start-up cannot validate the actual paying customers for the innovation, then protecting such innovation is expensive waste of time and resource unless there is an actual customer demand for the start-up’s product or technology. The business value from patents should be measured for it to be managed well. Patenting decision should be backed by data. Once they have established that a strong demand exists they must move quickly and ensure a strong IP protection to restrict competitors.
The second most important point for start-ups is to remember that patenting decisions must go hand in hand with business processes, as opposed to being an event or an output of product development process. Patenting decisions should be integrated into business strategy on an ongoing basis. We always let our clients know the viable option to integrate IP strategy in innovation process. Proactive IP strategies can help overcome patenting mistakes.
There are few important things you need to know as a start-up to address patenting issues efficiently and in cost effective manner.
1. Specifying protective IP provisions in employees, contractors, partners and suppliers agreements/contracts:
Start-ups usually start their business with consultants, suppliers, partners, contractors and employees. If these stake holders develop an invention during their working time with the start-ups, the invention will belong to the start-up if IP ownership clause is covered in the agreement/contract. However, the stakeholder will always retain her/his right to be mentioned as inventor. All stakeholders including owner and executive board members should sign agreement and assign all IP rights to the start-up if generated using start-up’s resources.
2. Accountability for IP process
Large companies have an in house IP counsel who has the knowledge of company’s ongoing innovation process and are often in charge of IP protection. However, for start-ups with limited budget, it does not make any sense to hire full time IP counsel. Start-ups could look for training one of company’s managers in IP processes who could be accountable for IP protection. Another viable option for start-ups could have an external IP strategist who could be part of the innovation team and has access to product development pipeline on a part-time basis.
Accountability of IP process ensures that the IP created are adequately protected and unrecoverable errors that open unwelcome competition are minimized. Furthermore, it reinforces that IP creation and protection are aligned with company’s business processes
3. Protecting valuable innovations with patents
It is true that not all companies create patentable invention, and it is also true that patents can be obtained for simple safety pins to complex automobiles.
Sometimes companies decide not to protect innovations with patent filings for various reasons like; cost factors, strength of protection, time factor or wrongly informed etc. At times these are business decisions.
If you don’t protect your invention, and the product becomes successful, competitors may copy your product. Smaller competitor may sell at lower price as they would not have incurred research and development expenditure. Also, larger organization has the advantage of volume and scale; they can compete for a reasonable market price.
Also, chances are there that someone else may patent same or equivalent invention and could legitimately exclude you from manufacturing or may ask you to pay a licensing fee for the use of invention.
However, you may also consider disclosing your invention to the public without patenting it. Then it becomes prior art for all future applications. This is commonly known as defensive publication. In such scenario, no one (including yourself) can file patent for the same invention due to lack of novelty.
4. Patents are territorial
Patents are territorial rights, granted and enforced by national patent office as per the law of that country. At present, there is no “Universal patent” or “World patent”. However, there are few regional patent offices like, “European Patent Office (EPO)” and the “African Regional Intellectual Property Organization (ARIPO)” that accept regional patent application and grant patent for that region.
Again, if you are seeking patent protection in multiple countries, you may consider filing an international application under ‘Patent Cooperation Treaty (PCT)’. PCT has 148 participating nations; any resident of these nations can initiate a single international patent filing process through PCT. However, the grant and enforcement of patent will be done by national patent office that you will choose.
5. Invention has to be unique universally
Though patents are territorial rights, but the invention has to be unique world wide, in order to be patentable. Before incurring the expense for patent filing, it is highly recommended to conduct a worldwide patent search to identify similar patents, to understand the novelty and inventiveness of the invention.
6. Have cost effective strategies for patent filings
Patent application drafting, filing, prosecution and maintenance can be expensive when you have too many international filings. So it is important to develop good strategies to minimise cost on managing IP assets. Start-ups should work closely with a patent attorney or patent agent and should do some initial work by themselves to save money. They should be actively involved in patenting process and understanding the patent procedures.
7. Patent claim coverage
Patent should provide long term business value and competitive advantage to company. Patent claims should cover more than just the product. It should cover the reason why the customer will buy your product. Patent claims should capture the value of the product. It should cover functional benefits of the product and claims should have sufficient scope to prevent your competition from providing the same value to your customer.
Intellectual property rights, especially patents, help in safeguarding a start-up’s innovation, serve as an indicator for potential VC funding and a guide to discover potential alliance partners.
Innovation to a large extent happens in start-ups, smaller companies, research labs and universities. As company becomes too large, decision-making process becomes slower. Large companies usually do not stay responsive to support a vibrant innovation ecosystem. Most of the times they prefer to buy smaller start-up companies with a thriving innovation process and good IP assets. Without legal ownership of technology, both sides may find it difficult to disclose the invention for the fear of idea or concept being stolen. Therefore, start-ups should have a good patent portfolio to trade with. Patents are tools that can help facilitate a deal with other company that may want part of your right though license or technology transfer. How will you trade the interesting things the other company has to offer if you don’t have anything to trade for?
This post is the second in the series of articles on “Entrepreneurship and IP”.
Disclaimer: The materials in the blog are solely for the purposes of informing, assisting and educating the readers and are not in anyway a substitute for professional opinion or advice. They do not constitute legal advice or legal opinion or solicitation.
Dr. Lipika Sahoo, Founder & CEO of Lifeintelect Consultancy Pvt. Ltd., a registered Indian Patent Agent having 16 years of experience in academia and industry. She holds a Ph.D from Indian Institute of Science (IISc). She holds triple masters; MSc from Sambalpur University; PGDIPR from National Law School of India University (NLSIU); PGCBM from Xavier Institute of management (XIMB); and advanced certifications from World Intellectual Property Organization (WIPO) in Patents and Patent Drafting. Dr. Lipika is also an inventor and passionate about technology & innovation; likes music, history & architecture.
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