For most start-ups their primary focus is on developing their technology and raising funds – sometimes protecting the intellectual property tends to fall to the wayside. However, developing an IP strategy at an early stage can be essential to the future success of the company. Major changes in U.S. patent law make developing an effective IP strategy even more important, lest the valu of the company be negatively impacted. There are at least three steps an early stage company should consider taking:
1. Don't disclose
Many early stage companies make the mistake of disclosing their IP in the process of fund raising or market research to explore the viability of the technology. In the U.S., companies have a one year grace period prior to filing a patent application during which disclosures will not jeopardize future patent rights. However, you are not afforded this same grace period in foreign countries and any disclosures will result in loss of foreign rights. While foreign protection may seem less important to an emerging company and to the initial investors, it will be important down the road. If the company is ever to be acquired, the buyer will want foreign protection.
2. File Early
On March 16, 2013, the US moves to a "first-to-file" system, in which the first inventor to file a patent application has priority (rather than the current first-to-invent system). As a result, applicants will no longer be able to claim priority based on the date of invention to get around a competitor's patent or other publication that predates their own. It will thus be especially important under the new system to file applications as early as possible.
3. Keep Your Filing Alive
Don't stop at one issued patent. A single filing will likely not be sufficient to protect your IP. Prior to issuance of a patent, always file a continuing application. When drafting claims in the initial application, the focus is often on protecting your own invention. Continuation practice, however, provides you with the opportunity to focus on blocking your competitors and any design around products they may develop that avoid infringement of your original patent.
Originally published in BostInno, February 6, 2013
This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.
