Key IP Tips and Strategies for Innovation-led Start-ups

Mindful Disclosures

Once an invention has been publicly disclosed – by anyone (including yourself) and in any way – it is no longer “new” and is therefore not eligible for patent protection. Disclosures include e.g. publication in a paper, a conference presentation, discussing the invention with anyone without a clear understanding of confidentiality in place, using the invention in a non-confidential environment in such a way that someone could see what the invention is.

 

• Take care not to disclose any information about an invention that you may want to protect with a patent in the future.
• Once a patent application is filed, you can in principle make disclosures, but take care that improvements or developments not contained in the application remain secret.
• If you need to discuss the invention with a third party (including potential investors, partners and advisors), make sure a non-disclosure agreement is in place – it can be a very simple agreement.
• Make sure your team is educated about the importance of confidentiality.

 

Balancing Budgets

Filing patent applications costs money, and the costs can be significant to a start-up balancing budgets. You will probably have to make compromises to balance budget and your IP ambitions.

 

• Make use of funding where possible – Innovate UK can offer some funding for IP support (more information here).
• Prioritise and time filings to fit your strategy
  • prioritise filing for technology that is core to your activities;
  • prioritise filings in areas where competitors are particularly active with patent filings;
  • prioritise filings where you will need to disclose information to partners/collaborators to take the innovation forward.
• Understand when the key cost points hit in the patent process: plan for this, and as far as possible tie this to likely injections of investment.
• Keep your IP advisors informed of your funding arrangements and timing of funding rounds, as well as any pressures to disclose inventions to third parties, so that they can advise you of what needs to be done and when.

 

Freedom to Operate

Having your own registered IP does not guarantee you freedom to use it. Competitors’ IP rights may get in the way. Think about when and how you will identify and manage the risk of competitors’ IP.

 

• Early-stage landscaping searches can give you a feel for the sort of technology that is patented, the key players in the field (who might be competitors or potential partners), and their approach to IP. These are best done when you have identified the key problem you plan to solve, and have some rough ideas for a solution, but have not yet begun detailed development.
• Detailed freedom-to-operate searches are best conducted when you know exactly what solution you plan to commercialise. These will check whether you risk infringing patents in a particular territory.
• Ongoing competitor monitoring checks for new patent publications by particular competitors or in particular fields. This gives you market intelligence, as well as early warnings about IP that might be relevant to you.

 

IP Advice

Get IP knowledge and advice early in your start-up journey. Line up an attorney you would like to work with at an early stage, even if you are not yet ready to instruct a package of work, so that you are able to act quickly when the time comes. Most attorneys will offer a little free time for an initial consultation, so make the most of this.

 

• Learn as much as you can about basic aspects of IP with available resources, so that you don’t need to discuss these basics with them.
• Book some initial conversations with a few different attorneys – make sure they have a background in your field of technology, and that they have experience working with start-ups. Take recommendations from organisations and other start-ups where you can.
• Talk to them about:
  • Your plans for technology development;
  • The role you think IP needs to have in your company, and whether they think there are other ways you can leverage IP;
  • When you should come to them for further advice, and especially at what stage you should seek patent protection;
  • Their approach to costs, and especially to giving you foresight and predictability;
  • Any aspects of the patent process or basics that aren’t clear to you from your own research.

 

If you are involved in an innovation-led start-up and would like to discuss any aspect of IP with a patent attorney, get in touch with Emily Weal, or any of our other attorneys, for a consultation.