I hear it all the time ... "I can't afford to protect
my intellectual property." Let me tell you that the reverse is
true for a startup ... you can't afford NOT to protect your
intellectual property! If you've decided to take the leap and
embark on a start-up adventure, then you will want to do everything
in your power to succeed.
Early stage companies are typically built on a great idea and a
lot of hope. These companies have not yet had the opportunity to
acquire tangible assets or to build significant sales revenue (if
any!). Consequently, the value in these companies is often in their
ideas and their ability to create products/services from those
ideas. Potential investors and partners won't take a second
look at a company if those ideas are not protected, or protectable.
The assumption is that all new companies have a great idea,
however, investors and partners alike need to know that they will
have a defensible competitive advantage over other companies before
they join in developing and growing such early stage endeavors.
It's all about mitigating risk.
Market exclusivity typically requires strong intellectual
property protection. But what does that mean for a start-up, with
limited resources and a nascent technology? I have identified below
four general areas of focus for valuable IP protection that are
important to early stage companies.
Avoid costly complications:
Know the competitors' IP so you
know where or what the company has freedom to practice without risk
Ensure that employees and contractors
assign their IP rights to the company upfront;
Scrutinize all third party
agreements, including so-called "standard" agreements
(e.g., confidentiality agreements), to ensure that they do not
restrict or damage the company's IP rights
Teach employees about IP
Create a working environment that
Identify inventions early and keep
quiet until they are protected
Reassess IP regularly to ensure it
remains consistent with the company's commercial and business
Use appropriate IP protection:
Don't rely solely on patents:
consider trade secret protection and remember the value of brand
protection through trademarks
With respect to patents, invest in
quality applications rather than a lot of applications
Invest in IP protection in as many
jurisdictions of commercial relevance as possible, while also
considering strength of protection available in each
Look for opportunities to fund IP:
Government grants for startups that
support IP expenditures
Monetize company IP (e.g., in
non-commercial fields of use, or jurisdictions; or IP that has
Finally, talk to your intellectual property advisor! For early
stage companies in particular, it can be beneficial to select an
advisor who can act as a virtual in-house professional, with a good
understanding of the company's business goals. This provides
both the company and the IP advisor the opportunity to proactively
and strategically grow the value of the company's IP
Ultimately, because of their limited resources, early stage
companies may need to be even more tactical than large corporations
in how they handle their IP. However, investing the time and money
to ensure that the company's IP is properly protected will pay
dividends in the long run!
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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Materials from a recent "refresher training" for examiners at the Canadian Intellectual Property Office (CIPO) highlight inconsistencies between CIPO's examination practices and Supreme Court precedent.
In this recently reported decision, the Court granted Apotex leave to deliver Fresh as Amended Responding Statement of Issues for the reference into AstraZeneca's damages or Apotex's profits, following the Court's decision that the ‘693 Patent is valid and infringed by Apotex.
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