Excerpted from the author’s article published in VC List. To read the complete article, please click here.
Patents can provide broad protection for invention and innovation. They can cover almost any novel aspect of a technology, including hardware, software, materials, and business methods. Many innovation developed by an emerging technology company can likely be patented, and patenting those innovations can create significant advantage in the marketplace.
A strong patent portfolio can help attract investments for emerging tech companies. Investors often look to see whether a fledgling company has protected its intellectual property (IP) when determining whether to invest.
Considerations When Disclosing Information about Your Invention
In the United States, as well as most of the world, the prior sale, prior use or public disclosure of the invention by the inventor or others may affect your ability to obtain a valid patent. Inventors may inadvertently jeopardize their ability to successfully apply for or be granted a patent by disclosing information about the invention to the public.
Manage Confidential Information to Avoid Unintentional Loss of IP Rights
One of the most important ways to protect IP is to avoid inadvertent or unplanned public disclosure. If the invention is released into the public domain — whether by publication, presentation, posting on a website, blogging, discussion with potential customers or suppliers — before a patent application has been filed, a total loss of the right to obtain a patent can result. Additionally, such inadvertent disclosure of the invention can reduce or eliminate competitive advantage.
To help protect your IP, there are some very basic documents you should always have in place to protect ownership and confidentiality of your intellectual property. The major ones are invention assignment agreements, NDAs, and employee handbooks.
File Early and File Quickly
As the US has switched over to the “first-to-invent” regime, emerging technology companies should consider patent strategies early in the design phase rather than waiting for a development of a prototype. By filing a US patent early, this allows a company to establish earlier priority dates over subsequent patent filings by competitors and to establish a competitive advantage.
Consider Provisional Patents
Filing a provisional patent application can alternatively be a useful strategy for start-up companies. A provisional patent application allows a company to preserve an earlier filing date at a minimal expense and delays a much more significant expenditure associated with a non-provisional application by one year. A provisional application is especially useful if it provides a detailed description of the invention and preferably explains valuable alternative implementations.
Patents are one of the strongest form of intellectual property protection and are essential to the growth of an emerging technology company. As companies develop their products and processes, and begin to seek commercial applications for their inventions, managing and securing valid and defensible patent protection will be vital to their long-term survival.
Emerging tech companies need to remain vigilant when transitioning from R&D to commercialization, since disclosing their technology without adequate IP protection in place can jeopardize their ability to secure future patent protection.