Leveraging Intellectual Property A Handbook for Startups
“Intellectual Property: A Handbook for Startups” describes how Intellectual Property (IP), while critically important to startups, is often not high on the founder’s agenda and can be lost in the chaos of other activities. Often, founders are struggling with multiple tasks, from securing customers, managing demanding lead users, generating revenue and eventually profit, satisfying investors while raising new funds, recruiting, hiring and retaining key employees, and so forth. The one critical success factor often de-emphasized in this chaotic mix is IP.
My intent in writing this book is to help any startup founder, and their leadership team, “fit in” IP using a well-honed approach to protect their firm from losing their early successes to fast followers. To accomplish this, I’ve curated an enormous amount of fragmented information available from various sources into a useful form by applying my 40 years of real- world experience in developing IP strategies. My approach is to create a handbook, useful as a reference document, enabling the reader to identify what to do, and how to do it in order to achieve some desired outcome. In essence, it’s modeled after the Boy Scout Field Handbook, which is useful in the real world experienced in the outdoors. ISBN-13: 9781523412969 ISBN-10: 1523412968, CreateSpace: ID, 5999794 Amazon (English):B01BO0NQ0A
Leveraging Intellectual Property: A Handbook for Startups
By Stephen Di Biase, Ph.D.
Intellectual Property (IP), while critically important to startups, is often not high on the Founders agenda and can be lost in the chaos of other activities. Often Founders are struggling with multiple tasks from securing customers, managing demanding lead users, generating revenue and eventually profit, satisfying investors while raising new funds, recruiting, hiring and retaining key employees and so forth. The one critical success factor often de-emphasized in this chaotic mix is IP.
My intent in writing this book is to help any startup Founder, and their leadership team, “fit in” IP using a well-honed approach that protects their firm from losing their early successes to fast followers. To accomplish this I’ve curated an enormous amount of fragmented information available from the web into a useful form by applying my 40 years of real world experience in developing IP strategies. My approach is to create “A Handbook”, useful as a reference document, that enables the reader to identify what to do, and how to do it, to achieve some desired outcome. In essence it’s modeled after the Boy Scout Field Handbook which is useful in the real world experienced in the outdoors.
I’ve begun by considering IP from two frameworks: What is “fractal” – the same for all startups, and what’s more situational to the firm’s business.
Fractal elements are those which are generally the same independent of circumstance whereas situational elements vary depending on what’s unique to the Firm.
Developing an IP strategy is like playing chess: Each player begins with the same pieces and position – these are the fractal elements. Once the game begins the players skill becomes the critical variable impacted by the given situation. It’s the successful integration of what’s fractal, with what’s situational, that yields a winning IP approach.
Extending the analogy further most chess players are amateurs with a few becoming Masters with much education and experience. The same holds for Founders relative to IP Strategy: They’re amateurs at best but require access to “IP Masters” to protect their businesses. Often these “IP Masters” must be retained from outside the Firm but eventually they need to be developed from within.
My treatise is intended to raise awareness that startup firms are in dire need of an “IP Master” if they’re to win the “IP Match” against competitors. Ideally these Masters are developed internally as the firm grows but early in the firm’s life cycle a “Master” needs to be retained on a contract basis. Simplistically, the firm can turn to a legal firm but often this is inadequate since most legal firms lack the industry experience to be effective “Masters”. Again my text is designed to offer the Founder a starting place for finding the “IP Master.”
A dangerous, and false assumption, is that the only important “pieces” in the IP game are patents ignoring IP in the forms of trade secrets, trademarks, copy rights and the knowledge held by the firm’s employees (e.g., know-how). Ignoring these “pieces” is like playing chess without the Rooks or Queen etc. leading to a significant disadvantage.
Given the Firm’s leadership must demand that IP is everyone’s responsibility, starting with them, I’ll discuss the various functions and their roles in identifying, securing, and defending the firm’s IP. These functions will include the leadership team, research and development, marketing, sales, and manufacturing. While other functions within the Firm will deal with IP these functions play a leadership role.
In making this text useful, the reader needs to consider how the firm defines and utilizes IP in developing their competitive advantage(s) supporting the Firm’s strategies and achieving its objectives. The leadership team needs to recognize the critical strategic and tactical considerations the Firm needs to wrestle within the context of their business.
What is a tech startup’s most valuable asset? It’s not the seed money. It’s not the work space. And it’s definitely not the espresso machine or Ping Pong table. The priceless heart of a promising startup is its IP — the disruptive idea, the brilliant invention, the genius breakthrough. This hot commodity needs to be protected by patents, trade secrets, employee know-how, copyrights and/or trademarks, but these aren’t enough.
Amidst all the recent attention-grabbing headlines of Silicon Valley IPOs, it’s becoming as important as ever for small and medium enterprises (SMEs) and startups to have a clear IP strategy in place, one that is aligned with their organization’s unique capabilities, business strategy and objectives. For startups, the prospect of where to even begin with an IP strategy can be a daunting task. It may seem easiest to leave this to law firms and other third parties, but that is not always feasible right due to budgetary constraints and that the Firm should never outsource its strategic intent.
All firms can, and should, take basic steps to protect their uniquely valuable IP. For many companies, especially startups, IP often represents an important component of a company’s value, perhaps the single most significant component. Investors and acquirers are often interested in such companies primarily for the potential embodied in their IP. Defects and deficiencies in a company’s IP portfolio can raise significant concerns for investors and acquirers, and in extreme cases may drive them away entirely. Yet, despite the apparent centrality of IP to a company’s value and potential, many companies fail to take basic steps to preserve such important assets.
This text will describe a few basic steps that any company can take to protect, preserve and enhance its IP.
Critical Strategic Questions
- What are the critical success factors the Firm should consider when formulating their IP strategy?
- What are the most important factors that start-ups should consider when formulating their IP strategy?
- What if I only have the budget to file a limited number of patents which will these be and why?
- What are the risks to the Firm in using a trade secrets approach instead of filing patents or using a combination of the two? What are the pros/cons?
- What should a startup firm expect to invest in IP during its early years? Should this be a "use of funds" when approaching investors?
- Can the Firm do any of this on their own or through more affordable, alternative service offerings and tools than hiring a law firm?
- How much should the Firm expect to invest to achieve the greatest impact?
- What if to save money and keep my technology hidden, I just want to use trade secrets instead? What are the pros/cons?
- Are there ways we can do any of this on our own or through more affordable, alternative service offerings and tools?
- How should the Firm protect its IP when new hires come on board?
- What role do the Founders play in developing and owning the IP estate?
- What happens if a Founder leaves the Firm?
- What protection does the Firm need terminating employees?
- How does the Firm’s IP estate impact how a professional investor (e.g., VCs, PEs) view of the Firm?
Critical Tactical Questions
1. What is the Firm’s IP Assignment and Nondisclosure Agreement “policy?”
2. What is the Firm’s IP Prosecution and Registration processes and IT Systems Security procedures?
3. What is the Firm’s employee retention and post-termination obligations?
4. What is the Firm’s approach to creating a culture of IP awareness?
5. What is the Firm’s position for deciding who owns the IP?
6. What is the Firm’s policies for making sure it has a good non-disclosure/confidentiality agreement program in place? Is it approved by a reputable legal firm? Is it auditable?
7. What is the Firm’s capability for making sure it owns what it thinks it owns?
8. What is the Firm’s position on international IP protection?
9. What is the Firm’s exit strategy and how does IP impact valuation and capability to exit?
Common Mistakes to Avoid
1. Ignoring the fact that eventually investors will conduct a careful due diligence of the IP estate.
2. Delaying or failing to commit to an IP strategy and developing an actions plan with metrics.
3. Neglecting to thoroughly research prior art.
4. Filing poorly drafted patent applications.
5. Not being timely, waiting too long to file patent applications.
6. Not deploying a strategy for preserving of trade secrets.
7. Failing to recognize the impact of the current first-to-file patent system vs. the previous first to invent system.
8. Misunderstanding the absolute novelty requirement in many foreign countries.
As previously mentioned, IP is much broader than patents alone so an effective IP strategy requires a more nuanced point of view, including copyrights, trade secrets and trademarks and know-how. Under each category I’ll consider the rights endowed by each category, the duration for which those rights are active and offer some examples. From this more general treatment I’ll focus deeply on patents since this form of IP is the most important. While patents and trade secrets are often the cornerstones of a startup’s IP strategy, they must not be consider in a vacuum.
Furthermore it’s important to remember that all IP must be considered a business tool for achieving the strategy of the firm, and as such, should not be considered as legal or technical entities alone.
My approach is to begin with history of IP using this as a context for creating an educated point of view that any Founder can build upon. This treatment will consider IP as it emerged in United States and United Kingdom over the past 150 years, acknowledging the ancient Greeks we’re the first to contemplate IP in about 500 B.C. From this historical context I’ll then dwell on 4 types of IP all startups should consider, how these can be protected, and for how long, with some examples. These are part of the “fractal” elements of IP or the same for all startups.
When the firm blends these “fractal” elements with those that are situational, a useful IP strategy emerges.
From here I’ll present a simple and easy to apply IP management practice based on proven methods used across many industries. These management practices will include invention disclosures, employee education, record keeping, protecting business information, patent filing practices and monitoring competitor’s IP.
These general concepts will create a focal point on patents as a cornerstone of any IP strategy. I’ll cover how to develop a customized patent strategy, under what circumstances certain approaches apply and what the Firm can expect from each strategy. These different kinds of patent strategies are situational and include aggressive, active, selective, passive, and reputational. Each of these approaches needs to be customized and aligned with the Firm’s strategies.
Finally, I’ll close with what is termed “Curveball Strategies” for confusing competitors based case studies of what other firms have done in creating their IP strategies. These examples provide a platform for protecting emerging digital based offerings which straddle the product-service interface perhaps requiring a unique approach that is still emerging. Overall my approach, based on very specific IP strategies and tactics, yield an IP portfolio delivering competitive advantage(s).
The hyperlinks in the appendix will direct the reader to curated information that can be used to customize the Firm’s IP strategies.
History of IP
The first known use of the term IP dates to 1769, when a piece published in the Monthly Review used the phrase. The first clear example of modern usage goes back as early as 1808, when it was used as a heading title in a collection of essays.
The German equivalent was used with the founding of the North German Confederation whose constitution granted legislative power over the protection of IP (Schutz des geistigen Eigentums) to the confederation. When the administrative secretariats established by the Paris Convention (1883) and the Berne Convention (1886) merged in 1893, they located in Berne, and also adopted the term IP in their new combined title, the United International Bureaux for the Protection of IP.
The organization subsequently relocated to Geneva in 1960, and was succeeded in 1967 with the establishment of the World IP Organization (WIPO) by treaty as an agency of the United Nations. According to Lemley, it was only at this point that the term really began to be used in the United States (which had not been a party to the Berne Convention), and it did not enter popular usage until passage of the Bayh-Dole Act in 1980.
"The history of patents does not begin with inventions, but rather with royal grants by Queen Elizabeth I (1558–1603) for monopoly privileges. Approximately 200 years after the end of Elizabeth's reign, however, a patent represents a legal right obtained by an inventor providing for exclusive control over the production and sale of his mechanical or scientific invention, demonstrating the evolution of patents from “royal prerogative to common-law doctrine."
The term can be found used in an October 1845 Massachusetts Circuit Court ruling in the patent case Davoll et al. v. Brown., in which Justice Charles L. Woodbury wrote that "only in this way can we protect IP, the labors of the mind, productions and interests are as much a man's own...as the wheat he cultivates, or the flocks he rears." The statement that "discoveries are...property" goes back earlier. Section 1 of the French law of 1791 stated, "All new discoveries are the property of the author; to assure the inventor the property and temporary enjoyment of his discovery, there shall be delivered to him a patent for five, ten or fifteen years." In Europe, French author A. Nion mentioned propriété intellectuelle in his Droits civils des auteurs, artistes et inventeurs, published in 1846.Until recently, the purpose of IP law was to give as little protection possible in order to encourage innovation. Historically, therefore, they were granted only when they were necessary to encourage invention, limited in time and scope.
The concept's origins can potentially be traced back further. Jewish law includes several considerations whose effects are similar to those of modern IP laws, though the notion of intellectual creations as property does not seem to exist – notably the principle of Hasagat Ge'vul (unfair encroachment) was used to justify limited-term publisher (but not author) copyright in the 16th century. In 500 BCE, the government of the Greek state of Sybaris offered one year's patent "to all who should discover any new refinement in luxury."
History of Patent Law2
Patents were systematically granted in Venice as of 1450, where they issued a decree by which new and inventive devices had to be communicated to the Republic in order to obtain legal protection against potential infringers. The period of protection was 10 years. These were mostly in the field of glass making. As Venetians emigrated, they sought similar patent protection in their new homes. This led to the diffusion of patent systems to other countries.
The English patent system evolved from its early medieval origins into the first modern patent system that recognized IP in order to stimulate invention; this was the crucial legal foundation upon which the Industrial Revolution could emerge and flourish. By the 16th century, the English Crown would habitually abuse the granting of letters patent for monopolies. After public outcry, King James I of England (VI of Scotland) was forced to revoke all existing monopolies and declare that they were only to be used for "projects of new invention".
This was incorporated into the Statute of Monopolies (1624) in which Parliament restricted the Crown's power explicitly so that the King could only issue letters patent to the inventors or introducers of original inventions for a fixed number of years. The Statute became the foundation for later developments in patent law in England and elsewhere. James Puckle's 1718 early autocannon was one of the first inventions required to provide a specification for a patent.
Important developments in patent law emerged during the 18th century through a slow process of judicial interpretation of the law. During the reign of Queen Anne, patent applications were required to supply a complete specification of the principles of operation of the invention for public access. Legal battles around the 1796 patent taken out by James Watt for his steam engine, established the principles that patents could be issued for improvements of an already existing machine and that ideas or principles without specific practical application could also legally be patented. Influenced by the philosophy of John Locke, the granting of patents began to be viewed as a form of IP right, rather than simply the obtaining of economic privilege.
The English legal system became the foundation for patent law in countries with a common law heritage, including the United States, New Zealand and Australia. In the Thirteen Colonies, inventors could obtain patents through petition to a given colony's legislature. In 1641, Samuel Winslow was granted the first patent in North America by the Massachusetts General Court for a new process for making salt.
The modern French patent system was created during the Revolution in 1791. Patents were granted without examination since inventor's right was considered as a natural one. Patent costs were very high (from 500 to 1,500 francs). Importation patents protected new devices coming from foreign countries. The patent law was revised in 1844 - patent cost was lowered and importation patents were abolished.
History of Copyright Law3
The Statute of Anne, also known as the Copyright Act 1709 (cited either as 8 Ann. c. 21 or as 8 Ann. c. 19), is an act of the Parliament of Great Britain passed in 1710, which was the first statute to provide for copyright regulated by the government and courts, rather than by private parties. Prior to the statute's enactment in 1710, copying restrictions were authorized by the Licensing of the Press Act 1662. These restrictions were enforced by the Stationers' Company, a guild of printers given the exclusive power to print—and the responsibility to censor—literary works. The censorship administered under the Licensing Act led to public protest; as the act had to be renewed at two-year intervals, authors and others sought to prevent its reauthorization. In 1694, Parliament refused to renew the Licensing Act, ending the Stationers' monopoly and press restrictions.
U.S. patents granted, 1790–2010.
The first Patent Act of the U.S. Congress was passed on April 10, 1790, titled "An Act to promote the progress of useful Arts". The first patent was granted on July 31, 1790 to Samuel Hopkins for a method of producing potash (potassium carbonate).
The earliest law required that a working model of each invention be submitted with the application. Patent applications were examined to determine if an inventor was entitled to the grant of a patent. The requirement for a working model was eventually dropped. In 1793, the law was revised so that patents were granted automatically upon submission of the description. A separate Patent Office was created in 1802.
The patent laws were again revised in 1836, and the examination of patent applications was reinstituted. In 1870 Congress passed a law which mainly reorganized and reenacted existing law, but also made some important changes, such as giving the commissioner of patents the authority to draft rules and regulations for the Patent Office.
Finally, but perhaps most importantly, are the startups dealing with the Internet of Things (IoT) facing the unprecedented challenges of protecting digital IP. While many of the conventional IP elements can be applied how they create a secure IP estate is to be determined by “IP Masters” who can visualize how to assemble them with new pieces yet to be discovered into an effective strategy.
A starting point is to critically evaluate how digital IP fits within the conventional framework and where it doesn’t by answering the following questions:
1. Do you really need a patent for your software-related invention? Think twice before preparing a patent application.
2. What do you wish to protect from your competitors? Identify the core part of your innovation.
3. Is your innovation patentable? Not all types of software-related innovation can enjoy patent protection.
4. Do you need to protect your innovation in international markets? Patent-ability requirements are not always the same in each country.
5. Consult an intellectual property expert who is familiar with the relevant national law and practice.
6. Can you effectively use trade secrets to protect algorithms and programs vs. revealing the innovations in a patent application?
7.Can licensing the software or making it a standard create greater value than keeping it confidential?
Unequivocally, the IP landscape is changing as innovations evolves in form from physical items to digital expressions where human concepts are captured in mathematical formats.
As the IoT expands these digital forms of value will gain larger shares of economic activity leading to new and unexpected strategies of IP protection. Leading startups will embrace this evolution and use it to create broad and sustainable competitive advantages creating large valuations for their investors.
Table of Contents
Chapter 1: Introduction Defining IP
Important Types of IP
The Value of Patents
The Patent Filing Process
Mistakes to Avoid
The Investor Point of View
Chapter 2: Critical Success Elements of IP
Methods for Protecting IP
The Four Main Areas of IP
IP Rights are Exclusive
Duration of IP Rights
Examples of Dealing with IP
Chapter 3: IP Management Basics
Patent Strategy Objectives
Management Review: Invention Disclosures
Protecting Business Information
Foreign Filing Strategy for Patents
Licensing of The Company’s Technology
Chapter 4: Comprehensive IP Management
Patent Intent – Definitions
Patent Strategy – Elements
Patent Portfolio Management
Patent Portfolio Approaches
Chapter 5: Managing Digital IP
Implications for Regulators
Creativity versus piracy
Patents for Digital IP
Patent and Copyright “Trolls"
Social networking and user-generated content
Music, Film, TV, Broadcasting, Publishing, Games
References for e-commerce
Chapter 6: Curve-ball Strategies
What an Effective Curve Ball Does
How to Throw Four Types of Curve-ball
Draw your Rival Out of the Profit Zone
Employ Unfamiliar Techniques
Disguise your success
Let Rivals Misinterpret Your Success
Where Curve-balls Come From
Making Marginal Customers Seem Attractive
Importing Best Practices
Extreme Asset Utilization
Import Successful Business Models