Second art of the series on by Dilip of Inolyst,IP consulting and IP monetizing firm.

Understanding Patent Priorities

Keep in mind the following points:

• What to patent
• potential commercial products of company
• methods of making and using the products
• systems utilizing the company’s products
• made by company’s customers
• parts of your product made by vendors
• commercially important inventions
• blocking patents to block competitors

Patent Process

• Identify new and unobvious ideas
• Prepare invention disclosure
• Forward disclosure to patent committee
• Committee decides whether to pursue invention
• Patent drafter prepares first draft of application
• Inventor reviews & revises draft
• Patent drafter sends final draft to inventor
• Inventor provides copies of material prior art to patent attorney
• Inventor signs assignment and declaration
• Assignment signature is notarized
• Patent attorney files application and forms in patent office
• Application is examined by patent office

Points to focus in your Patent Strategy

• Small portfolio of pioneering patents
• Market leadership & advantage
• Licensing
• Deal & merger leverage
• Small to medium size companies
• Reasonable cost
• Market monitoring
• Large portfolio of patents of various scope
• Protect products from copying
• Cause competitor design around
• Reduce risk of patent infringement suit by competitors – mutually assured destruction
• Cross licensing – market entry
• Medium to large size companies
• High cost

Recommendations for startups

General recommendations

• focus on few quality patents regarding key products and technologies in conformance with business objectives
• cost-effective high-quality patent portfolio
• indicator for superior technology and to be expected higher turnover growth rate
• decisive to be funded by venture capitalists
• quantity not relevant
• regular and systematic patent filing to build a strong patent position
• seek fast patent grants (avoid slower PCT-route)
• US venture capitalist usually pass on start-ups with long lasting patent infringement suits

Conclusions

• Patents are of vital importance to the commercial success of techno start-ups
• A patent is a shield for competitors
• A patent gives a strong position to negotiate with investors, an investor provides the conditions for a swift growth
• Licensees

Dilip Kumar | Founder | Inolyst | www.inolyst.com | info@inolyst.com