25 Oct 2018
Growing a technology enterprise requires strategic planning and coordination of fundraising efforts, research and development, sales and marketing, product releases, and seemingly a million other things. Where does intellectual property fit in with all these other moving parts?
Unfortunately, lots of growing tech companies get caught up in the excitement of taking a new product to market, and neglect to adequately protect their intellectual property — for example, by writing invention disclosure records and filing patent applications at the appropriate times.
Or, even when they do those things, they forget to review their filed patent applications to extract additional value.
Consequently, many tech companies end up taking a “reactive” approach to the patent process — in other words, their patent activities are driven by deadlines instead of strategic planning.
A more thoughtful and intentional approach to the patent process will lead to a stronger patent portfolio and a more efficiently managed IP budget. With these goals in mind, we recommend that you set aside time at certain milestones to think strategically about what technology your existing and future patent applications should cover.
MAPPING PATENT STRATEGY TO BUSINESS STRATEGY
Mapping your patent strategy to your business strategy generally involves linking the subject matter of your patent applications to your current business goals and product offerings.
For example, many tech companies have technology roadmaps or product timelines that are used to set priorities and goals around R&D efforts within the company. Why not use the same tools to set priorities and goals around IP activities?
Even if your business plans are more aspirational than pragmatic, tying them to your patent strategy can offer invaluable insights into how well your patent portfolio is aligned with key market opportunities.
Mapping your patent strategy could include:
- Preparing new patent applications to cover important subject matter that the company is currently developing
- Mining existing patent applications to see whether you have claims (or can file new claims) to cover features that have recently become valuable
- Checking whether your existing patent claims might cover a competitor’s products
- Preparing claim charts that show exactly how your existing patent claims map to specific components of your products or services
WHEN TO MAP YOUR PATENT STRATEGY: 5 MILESTONES
We recommend mapping your patent strategy to your business strategy and product roadmap whenever your company reaches certain milestones. Below we’ve listed five examples that will apply to most tech companies. But we encourage you to add to the list!
1. WHEN YOU’VE JUST FOUNDED YOUR COMPANY
If you’re just starting out, you should know what your initial product offerings are going to be. In that same vein, you need to identify any key innovations or goals that your company is founded on.
So consider the following:
- Short-term: What implementation details do you need to develop?
- Long-term: Which innovations do you anticipate being essential to your company’s commercial viability?
- Exit strategy: What markets will potential investors or acquirers be interested in?
Even if your initial product plans evolve over time, starting with a healthy patent filing can be extremely valuable.
Beyond the value of the patent application itself, we’ve found that for many tech startups, the first round of patent filings is an extremely valuable learning experience: finding the right patent counsel, understanding the key decision points, and getting a feel for the overall process.
2. WHEN YOU’RE TESTING AN INITIAL PROTOTYPE
There are several questions you’ll need to address before and after testing an initial prototype:
- What innovations were included in the prototype?
- What worked, and what didn’t work?
These questions will help you identify what features will be most important to protect through patent filings.
Timing is also important.
If an outside company is manufacturing the prototype, be sure to file your patent applications before you order the prototype: This could be considered a “sale” of the invention, or the manufacturer might file their own patent applications.
If you’re ordering important or custom components from an outside company, file those patent applications before you order, too: The manufacturer might file their own patent applications, or divulge details about the sale to your competitors.
3. WHEN YOU’RE RAISING FUNDS
Looking to attract venture capital? Developing a robust IP strategy beforehand can give you a leg up during discussions with investors.
To determine what features to protect, ask yourself:
- What innovations are driving investment?
- What markets do you plan to enter?
Investors will often want to see that you’ve been diligent and proactive in protecting your intellectual property. Be sure to hire competent legal counsel, and have a list of key intellectual property assets to show investors.
4. WHEN YOUR PRODUCT LAUNCHES
Consider the following questions both before and after your product’s initial launch:
- What features of your product are differentiators in the marketplace?
- What features are most useful or valuable?
These are the features that you should protect with patent applications before the product is publicly disclosed, sold or offered for sale. In line with our previous suggestions, if you’re ordering the final product or its custom components from an outside company, try to file your patent applications before doing so.
5. DURING AN ACQUISITION
When getting acquired, you can consider similar questions to those you’d ask when fundraising:
- What innovations are driving the acquisition?
- What markets is the acquirer planning to enter?
Be sure you can point to patents and applications in the company’s IP portfolio that cover these innovations and markets. This will increase the value of your patent portfolio in the acquisition, and will reflect well on the company’s overall level of sophistication.
DOCUMENT YOUR EMPLOYEE’S INVENTIONS
To create a strong patent strategy through all of these milestones, you’ll need to keep track of your employees’ contributions to your company by having them write invention disclosure records (IDRs).
Don’t know how to write an IDR? With our FREE template, you’ll never miss another key detail. Download it now!
Michael K. Henry, Ph.D.
Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.