L13 IP Strategy Flashcards
What is an IP strategy?
- plan which you will create and increase the value of one or more products in a business
- way of preventing others from exploiting your innovation by effectively using your IP
- disciplined evaluation (quality and strength) of current IP (yours and others)
- one pathway to provide maximum legal protection but at an expense
- describes what you will do and how you will police and enforce your IP rights - protection of IP
How is an IP strategy used?
- build your business plan
- leverage finance to fund your business (e.g. VC)
- stay in front of your competitors
- develop your commercialisation strategy
- know when, where and how to defend and enforce your IP rights
Intellectual Property Rights
the legal means by which IP is protected
Patentable subject matter
see onenote
- novelty
- inventive step
- usefulness
- industrial applicability
Types of patent applications
- provisional patent application
- establishes priority date
- first step in patenting process
- applicant can then disclose the invention
- no examination, is not published, lapses after 12 months
- does not lead to enforceable rights - international/PCT application
- filed with WIPO under patent cooperation treaty
- patentability search and opinion issues 3-4 month from filing
- is published 18 months from the priority date
- defers national filings and related costs - national patent application
- filed in countries of interest
- need to file translations in national language
- examined by national patent office
- granted and enforced under each countries’ national laws
Typical path
see onenote diagram
why do you need IP rights and IP strategy?
- competitive and commercial edge
- stop others copying and imitating
- competitors think twice - FTO - tangible product to license or sell
- develops an income/royalty stream
- creates collaboration opportunities - deterrent to competitors
- used for litigation, threat of litigation and opportunity to license
- defend your technologies
Know why you are obtaining IP protection
see onenote
decision must be consistent with your business goals and budgetary constraints
- commercial objectives
- licensing in/out technology - obtaining a large IP portfolio
- reputation
Risk management
3rd party IPR may present a bar to market entry, putting business objectives at risk
- competitors working in same area - similar IPR
- product may have been done before - same IPR
- many similar products on the market - crowded market
- products with similar trademark as yours - confusion in the market
Investors like patents
- startups that develop patent portfolios have much better returns for investors and entrepreneurs
The mann study
- companies without patents are twice as likely to go bankrupt
- companies with patent received about 73% more funding
- companies with patents are 4 times more likely to go to IPO (initial public offering)
Why not to apply for IPRs?
- fast moving technology
- limited market value
- trade secret might be of more value
- first mover advantage
- cost
Key criteria relating to obtaining IPRs
- cost and ease of filing an application
- patentable and non-patentable subject matter
- prior art and competitors
- grace periods (US, AU, JAPAN)
- provisional protection following publication
Grace periods
If you’ve disclosed it, you can still file something really quickly (within 12 months) and still get IP rights, it would still be considered novel (at least for US, AU and JP)
Factors to consider when deciding where to file
see onenote slides
- business/commercial need for exclusivity
- FTO in that jurisdiction
- immediate interested parties - potential licensees/manufacturers
- patentability of various subject matters
- status of patent systems and enforcement
- production in that jurisdiction
etc…
What to file? - subject matters
subject matter does matter
- affects where you might file and what your claims will be like
- type of subject matter can impact on where you file since the laws may prohibit some type of inventions
- method of treatment, mere admixtures, business methods, computer programs
Certain countries (e.g. Japan, Europe) doesn't allow claim over methods of treating e.g. Surgery - Swap claim around, use of compound X for treatment of surgery (targets the company who uses compound X to produce treatment for obesity), to get protection in those countries
