Category: IP Tips for Startups

Tip#1: IP Tips for Startups

3 Things You Should Know About IP

Intellectual Property

What is it? Intellectual Property (IP) is a term which includes patents, designs, trademarks and copyright. It is the main asset of many companies and certainly of most start-ups and relates to the rights surrounding technology or knowledge owned by them.

Why is it important?  Virtually all the assets of a start-up or of a new project within a mature company emanate from the knowledge on which the start-up or project is based. Establishing ownership of these knowledge-based assets is crucial to the development of the company.

When should we start registering our IP rights?

For patents, the short answer is: “before your competitor “. For a technology or medical device company, this means that for each invention you should start the patenting process as soon as you are able explain to another person how your invention works. For a life sciences company, where tests are required to prove that the invention works, you should start consulting with a Patent Attorney as soon as you can explain the science, define the tests you plan on carrying out and the results you expect.

For design registration, you must register before advertising the product.

For trademark registration, there is no set time. However, experience teaches that if you have a trademark that you want to keep, apply to register it before you disclose it. (Note that this is a practical, not legal requirement) If your mark is attractive to you, it will be attractive to others too. And if you don’t register it, someone else will.

JMB’s extra Q&A:

Q: On occasion, I’ve been told by an entrepreneur that he doesn’t really believe in IP, but he’s ‘doing it’ because his investors want it. If I don’t believe in IP, then isn’t it a waste of money?

A: The objective need to obtain IP assets for your company is not a matter of belief. It’s very practical. It is important to investors, partners, potential customers and competitors. A technology company without IP rights may be technology rich, but will be fortunate indeed to become a commercial success.

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!

Tip#2: IP Tips for Startups

3 Things You Should Know About Public Disclosure

Note: This is the second in a series on IP for Startups. To view previous articles please click here.

Public Disclosure

What is it?  Divulging knowledge to a third party who is not obliged to maintain the secrecy of the knowledge. This can be done by posting information on Facebook®, Twitter®, LinkedIn® or via other social media; by launching a crowdfunding campaign such as Kickstarter®, by posting information on any website, in any form whatsoever. This also occurs when sending information to potential service providers to obtain cost estimates or the like.

Why is it important?  Knowledge is power. Providing knowledge to someone who could potentially use this knowledge for his or her own benefit is giving your power away. It can also make it impossible for you to obtain patent protection for an invention which has been disclosed, unless a fully drafted patent application has been filed before public disclosure of the invention. An exception to this rule is in the United States, which provides a limited grace period of one year following the date of public disclosure during which a  patent application can still be filed without harm from the disclosure.

When can we publicly disclose information relating to our invention? In order not to risk your ability to patent your invention, any disclosure should be made only after a first fully drafted patent application has been filed so as to establish priority rights under the Paris Convention. Even then, bearing in mind that knowledge is power and having a patent application does not give the right to take legal action against an infringer (this can be done only after the patent has been registered), you should be careful how you disclose the information.

JMB’s extra Q&A:

Q:  Why do you keep mentioning a “fully drafted” patent application? I’ve heard that a Provisional application can be filed in the US Patent Office, and that it will give you a “priority right”, so why can’t I just go online and file a Provisional application that I have written?

A:  You can write and file your own Provisional application, but that would be a bad idea. The reason that you need a fully drafted patent application is that your priority right is only as good as what you describe and show in the first application. If you make mistakes, miss out important features or try and describe them in a way which is unacceptable according to the relevant law and rules which govern what needs to be in a patent application, those mistakes cannot be corrected. So, if you file a first application which has not been drafted by a Patent Attorney (and will therefore almost certainly not be fully or properly drafted), and then publicly disclose your invention, you may also have given away your ability to patent your invention.

NB:  Even if your application is fully drafted, you must not disclose an extension of your idea without first filing a new application for it as, by definition, it will not have been included in your original application.

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!



Tip#3: IP Tips for Startups

3 Things You Should Know About Secrecy Agreement

Note: This is the third in a series on IP for Startups. To view previous articles please click here.

Secrecy Agreement

What is it? Also known as a Non-Disclosure Agreement (NDA), a secrecy agreement is an agreement that is signed by someone who is interested in receiving confidential information, e.g. an entrepreneur.

Why is it important? Any time that you want to disclose secret information to someone else, for example a supplier, designer or potential partner, their signature on a secrecy agreement obliges them to keep your information secret, and your disclosure to them is not considered to be a public disclosure of that information. Theoretically, this provides you with limited protection even before you have filed a first patent application. Because of its importance, and the fact that every case is specific, it should be drafted by a lawyer who has experience in IP matters. It is not advisable to use a boilerplate NDA downloaded from the Internet.

When should I use a Secrecy Agreement?  It should be used prior to any disclosure of confidential information to a third party who is not otherwise required to keep your information confidential.

HOWEVER, in practice, it is not advisable to rely on an NDA prior to filing a first patent application. If the person receiving the information breaches the NDA that he has signed, the owner of the secret knowledge merely has the right to sue him for damages. However, in most circumstances even public disclosure which is in breach of an NDA will still make it impossible to obtain a patent if an application was not filed before disclosing the secret information.

JMB’s extra Q&A:

Q:  Sometimes you feel like you have no choice. You can’t file a patent application, yet you can’t rely on an NDA. So what can you do?

A:  Not having a choice’ normally means one of a several situations: (i) there’s no money to pay for a patent application to be fully drafted, and you need to disclose the invention to a potential investor; (ii) you have the money, but don’t want to spend it until you have received feedback from others in the market that your idea is a good one; (iii) you don’t know how to build your invention, and you need the input of a professional so as to help you.

If the only thing you can do before you’re able or willing to file a patent application is to rely on an NDA, try to ensure that the person to whom you’re about to tell your secrets is someone that you would trust even if they just gave you their word (they should still sign though). If there’s no one like that that available, try to get a recommendation from someone that you trust as to the reliability and trustworthiness of the potential inventor, engineer or design company that you plan to speak to.

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!



Tip#4: IP Tips for Startups

Note: This is the fourth in a series on IP for Startups. To view previous articles please click here.

3 Things You Should Know About Your Inventions

What is a Patentable Invention? An invention is a method or device, composition, system, process or method that is novel, inventive and useful, in a technology that is considered patentable (also known as patent eligible).

But what is a good invention for your business? That’s simple. If your invention is a business bottleneck or technological junction, then it’s worthwhile patenting. In other words, if your competitors need your patented invention in order to develop their own technology and/or in order to compete with you effectively, then it’s valuable to your business. By definition, a worthwhile patent will give you ownership of that bottleneck and control of that technological junction.

When do I need to evaluate my inventions and potential patents? The short answer is ‘from the beginning and every day after that’. The slightly longer version is that all patents are date stamped, i.e. you decide when to file a patent application. So while it is true that patents also have an expiry date, it’s also a first come, first served system, meaning that the sooner you file a patent application, the more likely you are to beat your competitors in filing a patent application for the same invention. Equally important is that to be patentable, your invention needs to be sufficiently ‘inventive’ when compared to the ‘state of the art.’ That means that even if no one else has already filed a patent application for the same or similar invention, any publicly available information, including posted digital content, or in magazines, newspapers, and press releases, anywhere in the world, can be used by patent examiners to reject a patent application or by a Court to invalidate a granted patent. You can’t prevent those publications. But you can decide when to file a patent application. As we said: it’s first come, first served!

JMB’s extra Q&A:

Q: I’m still not sure when I should file a patent application. I don’t even know if I have a patentable invention. All I’ve done is combine several known devices and components; is that enough for a patent?

A: There is no requirement to invent any new components so as to qualify for a patent. In fact, many patents have no new components whatsoever. What is required, however, is to have a new result, a significantly improved device or system, or a method or process that works better than the closest method or process, even if all you have done is to leave out some steps or change their order (if you’re talking about a method or process). If you are satisfied that you have reached such an improvement and you can explain this in writing based on facts or realistic, science-based conclusions, you may have enough for a patent. What you then need is to find a Patent Attorney and see if he or she agrees with you.

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!

Tip#5: IP Tips for Startups

Note: This is the fifth in a series on IP for Startups. To view previous articles please click here.

3 Things You Should Know About Patentability Searches

Patentability Search

What is it (and what is it not)?

  • A patentability search is a search of the prior art intended to establish the probability of successfully registering a patent for your invention. While the main data sources searched by both Patent Attorneys and Examiners are patent databases generally; and scientific journal databases for inventions in biotech and chemistry, this is mainly for convenience. There are vast sources of knowledge other than these databases. All publicly available information can be used to establish the patentability of your invention.
  • A patentability search is not a ‘freedom to operate’ search and should not be confused with such a search. (This will be discussed later in this series).

Why is it important? A patentability search is important not merely to assess the likelihood of obtaining a patent for your invention, but, equally significant, as a way of improving and strengthening your patent application. Discovering which parts of your invention may already have been thought of by others, will often cause you to rethink part of your invention and to improve it substantially.

When should I do it? As mentioned above, doing a patentability search may bring to light parts of your invention that have been thought of by others, in response to which you may come up with new and sometimes better solutions. Therefore, the best time to do a search is before preparing a patent application.

JMB’s extra Q&A:

Q: I was told that when a patent application is examined, a search will be done and the Patent Examiner will send me the results. If that’s the case, why should I spend the extra money on a separate search?

A: It’s true that you are not required to do a search, but you don’t want to wait for a Patent Examiner to inform you of the prior art. At that stage, which will probably be at least a couple of years after filing the application, you will have invested time and money, only to discover that your invention isn’t quite as patentable as you thought (and told your investors!). To make matters worse, once a patent application has been filed, it’s not possible to add information about variations and additions to what was initially described and shown. The bottom line is that the more you can find out about the prior art before drafting the patent application, the better prepared you’ll be, and the better will be the chances of receiving a valuable patent.

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!

Tip #6: 3 Things You Should Know About Patents

Note: This is the sixth in a series on IP for Startups. To view previous articles please click here.

What is a patent? A patent is a legal right which enables the owner of a patent (the “patentee”) to prevent unauthorized exploitation of the patented invention in a country or region where the patent is registered. It can be thought of as an offensive right, a right to take legal action against an infringer. It does NOT provide the patentee with freedom to use the patented invention, as a portion of the invention may be covered by someone else’s patent.

Why do you need it? You need a patent to increase your competitiveness and market value. We just said that a patent does not provide the patentee with freedom to use the patented invention. On the other hand, if you are infringing a competitor’s patent, your competitor may be infringing your patent (as you are both active in the same field). This gives you a position where at very least, you can agree to exchange rights (cross-license).

Even if you are not infringing anyone else’s rights, having a patent enables you to enforce your patent against infringers by taking legal action, or to sell them a license, thus providing useful income for your company while at the same time controlling the market (at least in part).

When do you need a patent? Let’s clarify the question. If the question is “when do you need to apply for a patent”, that has been answered in Tip #1. So the question is, when do you need to have a registered patent?

You need to have a registered patent to start enforcing your patent rights against an infringer. That means, that to the extent possible, you should try to look ahead and see where (i.e. in which countries or regions) you plan to be active (for example, by sales and distribution of products covered by your patent); and when you expect this to be.

Q:  I want to start talking to people about my invention. When can I do that without jeopardizing my chances of a getting a patent?

A:  That’s a good question. You don’t need to wait until you receive a granted patent or even until you file a patent application, but best practice dictates that you should rely on an NDA only if you can rely on the person signing it. Otherwise, it would be better to wait until after your first patent application has been filed. Your proof of filing will be that you have a patent application number and an official filing date. We’ll be discussing ‘patent pending’ and what it means in the next tip.

For more on NDAs you are invited to refer to our Tip #3.

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!