As an intellectual property attorney, I engage with a startups in a variety of ways. Regardless of size and stage of development, I help clients identify and protect their IP; build and manage a robust IP portfolio; and leverage their IP assets for fundraising and business growth.
Often, startups reach out to me early in their development when they have a general idea that they “need to protect their intellectual property.” However, they often don’t know exactly what that means or what the process entails.
Any startup that is innovating or involved in R&D should seek legal advice from IP counsel early and often to avoid issues that can come back and hurt their company down the road. One common mistake for those who don’t engage with IP counsel, for example, is the risk of accidental disclosure of a company’s innovations to people outside the company prior to having IP protection. This misstep could undermine a company’s ability to obtain patent protection for their innovations in the future.
Early legal consultation matters in building a strong IP foundation and can mean the difference between a fledgling idea and a thriving company. This Q&A will answer some of the more common questions I receive and will help startups navigate the complex IP landscape and cultivate a competitive advantage.
Can you explain how the expertise of an IP professional could add value to a startup as they develop or commercialize their product and formulate an IP strategy?
As an intellectual property attorney, I am often asked to help startups identify and protect important aspects of their innovations. A big part of my job is making the case to Patent Examiners that a patent should be granted to an invention. It is common for a startup’s view of the importance of their invention to be out of alignment with that of an Examiner. However, for such startups, it is most likely not in the company’s best interests to be drawn into a protracted and expensive disagreement with a Patent Examiner. Instead, I counsel my startup clients to be thoughtful and targeted with their initial patent filings—to specifically cover a commercial application of their invention, or another pointed embodiment, which is less likely to face major obstacles during examination.
If a patent is granted in good time, the startup can use that patent as a promotional tool when courting investors and scaling the company. Subsequent patent filings, if resources allow, can then be directed to a more complex IP strategy. Startups that focus their strategy in this way—starting with the applications most likely to be granted and then moving to more expansive filings—can maximize their limited resources, often resulting in a more meaningful impact on the company’s future.
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What aspects of a startup’s business model or industry do you consider when providing legal advice, and how do you ensure your approach aligns with their unique needs and goals?
Thoughtful legal advice should not only consider the current state and needs of the startup but should also encompass potential upstream and downstream development. A holistic view of the company along with its suppliers, customers, partners, locations, and competitors can result in legal advice that is not only tailored to meet the immediate goals of the company but also considers how to best position the startup for future success.
From your perspective, what are the common legal or IP challenges that startups often face, and how do you proactively address these issues to prevent future complications?
A common legal pitfall that startups often find themselves in is trying to “do it all.” Every startup has limited time and financial resources. Planning for and then undertaking a legal strategy that does not realistically consider these limitations, in conjunction with the companies short- and long-term goals, can lead to a situation where resources are being spent at an exceptionally high rate to achieve very little. Instead, a startup should develop legal strategies that are based on a genuine view of the current state of the company, its available resources, and achievable goals. For example, a company with limited resources should not develop and implement an international filing strategy that is beyond their means. A thoughtful and targeted plan focused on where the company is located, where the company’s customers are located, and where the company’s competitors are located (in that order of importance), is most often the best approach.
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Some startup owners think engaging with an attorney is not a priority until the business grows or scales. What advice would you offer to entrepreneurs who are not budgeting for legal consulting early on?
I would caution them that they delay at their own peril. Many legal questions/considerations are time-sensitive, and claiming ignorance is almost never a good defense. Even if there are budgetary constraints, funds should be set aside to gain, at the minimum, a general understanding of the legal landscape into which the startup is entering and any hard deadlines that should be considered. For example, in intellectual property law, there are hard and fast filing deadlines that can be triggered, regardless of the intent of the startup. Missing such a deadline to protect what are oftentimes considered to be the “crown jewels” of the startup, can be incurable and subsequently lead to the demise of the company.
What types of intellectual property protection are relevant to a startup in its early stages?
While patent protection is oftentimes addressed first because of the strict laws regarding the filing of applications in relation to any public disclosure, offer for sale, or sale, startup companies would be wise to consider all appropriate forms of intellectual property, as oftentimes, the first to act to protect such property wins. For example, trademark, trade secret, copyright, and design patents are additional forms of intellectual property that can be used, in conjunction with utility patents, as part of an “IP arsenal” to protect the innovations of the company. It is important to include consideration of these options when first developing an IP portfolio. This can help to ensure the possibility of protection in the future and that no hard and fast deadlines or procedures are missed.
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Are there any international considerations that startups should be aware of regarding the protection of intellectual property, especially if they plan to expand operations globally?
Through multiple international treaties, most of the intellectual property protection-related laws around the world are substantially harmonized and integrated. For example, most startups are aware that within one year from filing a provisional patent application, a full non-provisional US application must be filed. However, that one-year window is also the deadline by which any and all foreign applications claiming priority to the US provisional application must be filed. If foreign applications are not filed at that time, the startup will not be able to later file foreign applications to the same invention. Accordingly, startups should be mindful of such deadlines, and a full vetting of potential future expansion and the existing commercial landscape should be undertaken before a decision not to file is made.
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