Be smart about protecting your most valuable asset
A startup is, essentially, a new idea and proof that it can work. Regardless of whether your are still developing your idea, or if your business is up-and-running, you need to protect your ideas and how they work. IP protection is essential – and it can pay to learn how to protect your intellectual property strategically with an intellectual property lawyer.
Protecting your startup’s intellectual property will allow you to monetize your ideas and work, avoid the theft of your ideas, help you secure funding, and lead to higher valuations when your business eventually gets appraised. This article provides a concise overview of what you need to know about intellectual property protection strategy.
Be Strategic: Know Your Competition and Know Your Market
There is no one-size-fits-all intellectual property strategy. Your ideal approach to IP will depend on the market within which you want to commercialize your idea. Before formulating your strategy:
- Identify the owners of the foundational technology in your market: who is filing and buying patents in your space?
- Identify the pace and typical patterns of innovation in your target market
- Identify strategic areas for growth and innovation
- Identify which patents will be most valuable for your product.
Be Scrupulous about IP Issues While You Are Developing Your Idea
If you are still in the phase where you are brainstorming and developing your product, it can be easy to regard intellectual property as something that you’ll deal with later down the road. Don’t. Intellectual Property law is relevant from the start.
Never use an employer’s time or resources to develop your own ideas
If you are still employed and working on your new startup idea on the side, be sure to never use the resources or time of your daytime employer to do so. In almost all cases, you would have signed invention assignment agreements with your employer. If that is the case, anything worked on in your employer’s time becomes his/her intellectual property.
Create founders agreements, and have contributors assign IP to the startup
In most cases, brilliant ideas are born from a collaborative process. It is always a good idea to have a few people working together on your startup, but be sure to clearly define everyone’s rights to the intellectual property in question. Have contributors all agree on invention assignment agreements, or create an agreement between founders to govern this issue before any conflict or controversy arises.
When you do incorporate your startup, transfer all IP to the company
If any intellectual property was developed before your startup was incorporated, it will not automatically become the startup’s property. You will have to conclude a written agreement to transfer the IP to the company. Do so as soon as possible after incorporation.
Evaluate Your Product Before Choosing What Protection You Need
The ideal intellectual property protection will depend on your asset, your market, and your commercialization action plan. The following are different forms of intellectual property protection that you should consider:
Patents are generally considered the most robust protection that you can get for a new product. The patenting process is expensive and lengthy, however, and not all inventions qualify for patent protection. Patent protection is granted on the following conditions: (1) the invention must have a useful purpose, (2) the invention must be new or novel, (3) there must not have been an earlier file for patent protection of the invention, (4) only the concrete embodiment of the idea can be eligible for patent protection.
If you decide to pursue patent protection, you might want to file for provisional patents, and to decide between design and utility patents. More on that below.
Copyrights protect works of original authorship (such as images, art, text, stories, etc.). Copyright grants an author the exclusive right to make copies of the work in question.
Trademarks and Service Marks
A trademark protects a particular word, name or symbol that is used to distinguish a product in the market. Service marks serve the same purpose for services.
Trade Secret Protection
A trade secret right allows the owner of the right to take action against anyone who breaches a confidentiality agreement and shares or obtains improper access to secret information. Trade secrets protection does not offer any legal protection against competitors who might independently develop the same technology as you, however.
Develop a Global Intellectual Property Strategy
When you expand beyond the domestic market, you do not want to be caught off guard. Be sure to register for protection in all markets that you want to be able to enter down the road.
Do Your Research Before Using Open Source Software
Many startups use open source software and the benefit of doing so is considerable. However, be sure to read the terms and conditions: some open-source software licenses prescribe the particular ways in which that software may be used. If you are in breach of the license, you are in breach of contract and you might also be committing copyright infringement.
Additionally, some open source software agreements determine that anything built with it also becomes open source. If this is the case, you will forfeit intellectual property right to your product.
If filing for Patent Protection, Keep the Following in Mind
File early and keep quiet
The US uses a first-inventor-to-file system. Regardless of who first invented a product, the first person to file receives patent protection. Therefore, be sure to file as early as possible. Additionally, there is only a one year grace period between the first publication of your invention, and the deadline for filing for patent protection.
Keep on Filing as Your Product Evolves
Your IP strategy should facilitate your product development goals. If you do not keep up to date with your IP protection, your product might be underprotected or not protected at all.
Be sure to file for additional patent protection as your product grows and changes. If your product develops quickly, you could also file for provisional patents – this secures an early filing date whilst allowing you some more time to file for a non-provisional patent.
Consider Design Patents
Since the Supreme Court’s decision in Alice v CLS Bank, it can be quite difficult to obtain utility patents for software-related products. Utility patents protect the way a product works.
Another option, however, is design patents, which protects the way a product looks. That might be a more obtainable form of protection, depending on the nature of your product. Keep in mind, though, that utility patents last 20 years and design patents only 15 years.
Don’t Wait for Your Patent Before Getting to Work
Once you’ve filed for patent protection, start commercializing your product! The U.S. Patent Office takes, on average, about 2 years to issue a patent, and in 30% of instances the patent application is not granted. Take all the precaution necessary, file early, but don’t delay your business once you ‘ve done what you can from your side.
Consult IP Lawyers
Get an experienced IP attorney to assist you in formulating the ideal strategy for your product and understanding how to protect your intellectual property. LawTrades’s affordable, accessible and convenient legal services provide everything you need to know about intellectual property protection at the click of a button.