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The following article examines the issues a technology company must address in establishing an IP strategy that will enhance the value of its IP portfolio and its prospects for capital financing. Enhanced value can result, for example, from an increase in revenue and increased market share that results from a well planned IP portfolio. Check lists are provided which can benefit both start-up and more established companies as both need to protect and build the value of IP in core technologies that differentiate their technology from that of their competitors. While this article principally focuses on assisting start-ups to attract venture capital, the process of valuing and building core technology is the same for any size technology company. Even in a difficult market, venture capital financing is possible for a company with a strong technology and an experienced management team if the potential market is attractive. The ability of a start-up company to demonstrate market potential to the venture capital community cannot be accomplished, however, without building and constantly nurturing an intellectual property IP portfolio. The business plan and IP strategy of a start-up must therefore be planned and coordinated from the outset. Moreover, the IP plan should work in a tandem with a solid funding strategy. To the VC, IP is often an integral part of value creation in a technology-based enterprise. On the flipside of this equation, founders understandably want to maintain as much ownership of their company as possible. It is well known that patents, trade secrets, copyrights and trademarks can create advantages needed to establish a dominant market position and to achieve commensurate profits. In turn, this ability to establish a dominant market position translates directly to higher capital stock values and a greater reward for founders and investors. The challenge for a start up is to effectively communicate the potential advantages of what is often nescient IP protection. Often, with a start-up, patents have not been issued, the market and competition have not been wholly identified or proven, meaning the ultimate strength of the IP Portfolio is difficult to assess. The recent surge in IP acquisitions and valuations is the only the latest testament to this fact. But even for a start up, IP offers a differentiation between competitors, or solutions, and therefore it is often the key to quickly achieving significant market share and premium profits — or at least to being able to convey the possibility thereof. Valuable IP can include patented formulas, computer code and technical processes, as well as trade secrets, know-how, trademarks, and domain names. Indeed, a break-through product may derive its success from all such forms of intellectual property. During the dot-com boom, valuations were sky-high and IP was almost an afterthought. Today, however, only companies with solid IP are able to raise money or achieve meaningful valuations. At the heart of such assessments is a full analysis of the IP protection that has been put in place, and whether there is a viable strategy for protecting core technology. As a result, a startup looking to successfully raise venture capital must be prepared to show that they have put in place IP protection that will justify the valuations they are seeking. Then they want to understand how the company intends to achieve its business goals given the competition that exists. In short, it is important to build an IP strategy in a way that is commercially relevant and that allows you to easily convey the commercial relevance of your IP strategy to a potential investor. It is also important for technology start-ups to understand the types of questions a well informed VC will be asking when assessing the start-up. So what types of questions will a VC be asking? First, the well informed VC will focus on the market, with questions like:. A successful start-up must develop its IP strategy with these questions in mind. Often, a VC will undertake an IP audit. To perform the IP audit, a VC will often hire a diversified and technically sophisticated IP legal team to analyze the IP strategy of a potential investment in the context of the above questions. The following details some of the important aspects of a typical IP audit. List patents, patent applications, trademarks, trademark applications and copyrights. Ensure that the company has established, adhered to Copyright and Trade Secret policies. Create accurate and complete patent, trademark, and copyright files. Search the records of the U. Patent and Trademark and Copyright Office and comparable organizations of other jurisdictions, if necessary. Similar searches in other countries would be necessary if the company filed abroad. Determine whether patents have been filed for all patentable inventions of value and whether patent filings have been properly prosecuted. Make sure any renewal fees have been paid. Look at whether trade secrets are being properly documented and whether the company has taken reasonable steps to protect their confidentiality. Ensure that the company uses confidentiality agreements whenever it discloses its technology to a third party. Gather all cease and desist type letters. Review all current and potential litigation. Assess impact of termination clauses, assignment provisions, fields of use or territory restrictions, royalty provisions, exclusivity terms, and unusual warranties which could significantly affect asset value or transferability. Employee and consultant agreements need to be reviewed for breadth and enforceability. Is there documentation sufficient to convey to the company usable IP rights in works created by consultants or third parties? Determine whether the company has licensed or compromised any of its IP, and, if so, how and under what conditions. Review all licenses, assignments, distribution agreements and other commercial contracts that could convey any rights in the IP. Exclusive agreements, which transfer all rights to IP are of special concern. Non-exclusive arrangements should also be reviewed. They may make it impossible to grant exclusive rights in the future and may create unusual royalty provisions or may impose affirmative obligations on the company. Patents are a significantly stronger form of protection than copyrights. Patents involve higher expenses than copyrights or trademarks. However, the relative benefits justify the expense and trouble seeking patent protection can involve. Patents can be obtained that cover a variety of products and services. Software and methods of business are patentable if they meet the essential requirements for a patent. A key question to ask: is whether the technology that is the subject of the patent application is in the public domain? Prior to filing your patent application, it is essential that confidentiality and secrecy in relation to your technology be maintained. Failure to keep it confidential can prejudice patentability. A mark used on or in the sale of goods is known as a trademark. A mark used in the sale of services is known as a service mark. Trademark searches, public register searches and domain name searches can be carried out to gauge the strength of current marks owned by the company. Even if trademark protection exists, policing of your trademark rights is important. Has the company moved quickly and decisively to protect its rights? Delays in doing so can prejudice rights in subsequent litigation. Ensure that proper marking and that the registered trademark warning appears on all literature which use the trademark, as well as the correct legal name of the owner. Copyright prevents the copying of physical material. It is not concerned with the substance of the idea but rather with the reproduction of the form in which the idea is expressed. Check whether the software developers are employees of your company. If such employees create code or other copyright works during the course of employment, then the copyright in that software is the property of your company. It is different with third party contractors and consultants. If you use them to write software code or create other copyright works, you do not have complete rights unless the appropriate legal documentation is executed. Have there been proper and enforceable confidentiality and noncompete agreements? If there were prior disclosures of business secrets, such as ideas for a new product or financial information relating to your business, it is of crucial importance that before the disclosures, the recipient of the information signed a confidentiality agreement or secrecy agreement which provides sufficient protection from unauthorized disclosure or misuse by the recipient. It is also important to maximize the patent protection of their technology in a way that makes it easier for someone about to invest in their technology to determine whether it is a worthwhile investment. There must be communication, not only between the IP attorney and the inventors, but also between the IP attorney and management — — including the marketing department and business plan visionaries to ensure that forward-looking patent protection is in place before there is a publication of research findings. A check list for doing so which summarizes both offensive and defensive strategy is attached and summarized below. Moreover, not every IP attorney understands the importance of being able to convey the IP strategy in a manner that makes it easy for potential investors to understand. Litigation experience is also important, not only because it helps in writing stronger patents, but navigating a start-up through the critical early phases requires skills in litigation avoidance. But for the start up flexibility on costs, the ability to offer alternative arrangements, and a thorough understanding of the world of a start up, are also key attributes to look for when selecting IP Counsel. You IP counsel needs to be passionate about your startup company, really understand your technology and markets, and how to effectively build an IP portfolio for a start-up. When building an IP strategy, a technology company needs to assess key aspects of its technology and its intended markets. In preparing patents and patent applications, the client and patent lawyer must collaborate to put in place a combination business and IP plan which should start by answering the following questions in Exhibit A. It is often the key objective in mergers and acquisitions. A start-up without a solid, readily definable IP strategy is unlikely to be successful in raising venture capital. In contrast, a start-up with a credible, well defined IP strategy can even find itself with some leverage when negotiating venture capital terms. This process includes developing claim strategies that create market barriers and protect or create revenue streams. The process also includes preparation and prosecution of U. In particular, Mr. He can be reached at noel. Review Current Patents And Applications. Coverage Issues — The claims define the technology invented and the boundaries from which competitors will be excluded. What do the claims of the patents and applications on file cover? Will they protect sources of income? What type of additional claims can be used, product, process, method composition, broad or narrow? If we claim methods of doing business — are there flow charts which describe software, hardware and internet implementation of each step in the business method. You can file paper patents even where there is no actual product. Do not be constrained by current technology. In making the above analysis, keep in mind that known prior art must be disclosed to the PTO to avoid a charge of inequitable conduct. A patent application must be filed within one year of the first publication, public use, sale or offer for sale or your rights will be lost. We must identify any one year bars! Outside of the United States, absolute novelty is generally required. In most foreign countries, a patent application must be on file in the United States or other treaty country before any publication, public use, sale or offer for sale. Patents provide the right to exclude competitors who trespass on the property defined in the claims by obtaining injunctive relief in a court of law. If a patent is infringed, damages can be recovered, including, lost profits or a reasonable royalty. Patents may be useful as a bartering tool, as an aid in settling litigation, to raise capital or to avoid litigation. Applications in foreign countries must be filed within one year of the U. Skip to content info accesssiliconvalley. Toggle navigation. Does the technology address significant problems in the market? Are patents and IP sufficient to create effective barriers to entry of the market by competitors? Are there competitive alternatives and, if so, is the market large enough to yield a significant return on the investment? How much capital is needed to achieve a sustainable market position? Are there other potential sources of capital beyond the venture capital? How strong are the proprietary aspects of the technology including patent protection? Docs the company have issued patents or patent applications on file with claims that cover the products and services the company intends to market, including anticipated products and services in anticipated markets? Are there any ownership issues related to the IP? What further development of the technology and the IP position is needed? Coverage Issues — The claims define the technology invented and the boundaries from which competitors will be excluded 1. Will they cover the products processes or services you intend to market? Will they cover anticipated products or services in anticipated markets? Brainstorm — what if you were a competitor trying to avoid the claims? Make your IP plan conform with your business plan. Make sure you own the patents and applications — clear title. Continuously Identify Additional Improvements and Developments to file patents on. Technology evolves, so identify improvements to current products or services. Identify new products or services — be forward thinking. Where is the technology going? What markets should be protected? Identify future markets. Was there a long-felt need for the invented technology? Was there a skepticism to solving the problems? Was there a failure of others? Was there commercial success? Did prior art teach away? Document the above and use with the Patent Office or with Courts. Engineers, programmers or scientists should keep dated and detailed lab notebooks. Invention disclosures should be prepared on new inventions. Schedule regular patent committee reviews. Who are the major players in each market of interest? What are their patent positions? If blocking can they be surrounded? Can you patent specific commercial uses? Beware of Patent Bar Dates i. Advantages of Obtaining Patents. Foreign Patent Protection. Other Avenues of Intellectual Property Protection. Copyrights ii. Trademarks or Service Marks iii. Trade Secrets: 1. Employment and Consultant Agreements IX. The legal effects of attorney opinions. Evolving stricter standards by Court of Appeals for the Federal Circuit. Costs of litigation. Payment of damages lost profits or reasonable royalty. Possible Risk-Avoidance Strategies. Indemnity agreements. Creating a fund if lawsuit is inevitable. Insurance both offensive and defensive. This website uses cookies to improve your experience. Accept Read More. Close Privacy Overview This website uses cookies to improve your experience while you navigate through the website. Out of these, the cookies that are categorized as necessary are stored on your browser as they are essential for the working of basic functionalities of the website. We also use third-party cookies that help us analyze and understand how you use this website. These cookies will be stored in your browser only with your consent. You also have the option to opt-out of these cookies. But opting out of some of these cookies may affect your browsing experience. Necessary Necessary. Necessary cookies are absolutely essential for the website to function properly. This category only includes cookies that ensures basic functionalities and security features of the website. These cookies do not store any personal information. Non-necessary Non-necessary. Any cookies that may not be particularly necessary for the website to function and is used specifically to collect user personal data via analytics, ads, other embedded contents are termed as non-necessary cookies. It is mandatory to procure user consent prior to running these cookies on your website.
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