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.
Continue Reading Managing Your Patent Portfolio to Attract Investments

Design patents can play an important role in protecting a tech startup’s innovations and creating competitive advantage, whether they are the only available protection or part of a larger patent strategy. Often overlooked and sometimes undervalued, design patents are typically easier and less costly to obtain than utility patents. While generally having a more limited scope of protection, design patents can still deter potential infringers in the U.S. and foreign countries.

As of May 13, 2015, U.S. emerging tech companies have a new option for design protection in foreign countries. The U.S. joined the Hague System for the International Registration of Industrial Designs on May 13, 2015, and U.S. design patent applicants can now take advantage of the Hague System to obtain protection for their inventive designs in foreign countries.


Continue Reading Success by Design: A New Option for Expedited Patent Protection in Foreign Countries

Idea TreeConsider Provisional Patent Filings

Filing a provisional patent application in the U.S. is often a useful strategy for start-up tech 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. By the anniversary of the provisional application filing, a non-provisional application must be filed in order to take benefit of the provisional filing date. A provisional application is especially useful if it provides a detailed description of the invention and preferably explains valuable alternative implementations. Otherwise any new subject matter added to the non-provisional application will not be given the benefit of the provisional application filing date.

Options for Non-Provisional Patent Filings

With the enactment of the Leahy-Smith America Invents Act (AIA) in 2011, there are now multiple opportunities to speed up the patenting process for which companies, such as those focusing on nanotechnology related inventions, can take advantage when filing a non-provisional. The two main options are (1) prioritized examination and (2) accelerated examination.


Continue Reading Provisional Patents as a Strategy for Tech Start-Ups