Exponential Technology Counsel

Whether you wish to build the most effective patent portfolio, or avoid potential infringements, or identify new opportunities, or put together a strategy for acquisition, it's important to start with step one – get a landscape overview - so you can develop an effective game plan … and be successful.

Why IP strategy?  After all you hear that term used all the time.  If you go to IP seminars it seems that every in-house counsel has a different interpretation of what is important and where they should focus their budget. But apart from a lot of misinformation, there is another aspect – startups are different – the IP considerations are different. Learn the 5 Golden Rules to building an effective IP portfolio for your startup.

You can read books and attend classes on negotiating skills - but the reality is that at the end of the day there are only three rules: Do your homework Have a walk-away position Be flexible …and all of them are related and depend on one maxim: "Knowledge is Power" – which defines the outcome "He who has the power, makes the rules!"

The problem is you're asking the wrong question

It is a function of what stage of development your company is in and on the particular technology involved.  Because risk management involves both litigation avoidance – not only from competitors, but also from consumers – as well as mitigating the chances of someone stealing your technology. Years of hard work can unravel in a matter of days if you don't plan ahead in avoiding the pitfalls.

I recently spoke to an angel, several VCs and a corporate investor – each with the same question: What are you looking for in an investment? Interestingly, they all had pretty much the same feedback….

But there is more to it than past experience.  Business strategy is not a cookie cutter business, and having a CEO with past experience does not necessarily translate into success…and can actually be a negative. Understand that each company is different and start by gathering the data that will inform you about your entire playing field, before you tap into any past experience.

Before you embark on any military campaign you want to gather intelligence – spies, reconnaissance groups, code breakers – because it tells you something about your opponent and how best to engage them. The same applies in business.  You need to know where you are going and what you're getting involved in before you can effectively embark on a business plan or an IP strategy. Understand the how and why of business intelligence.

A patent - as you typically think of it - protect inventions, ideas or concepts. Which distinguishes it from a Design Patent, which still applies to functional items or items of manufacturability, but serves only to protect the ornamental design.    So where does Copyright come in?  Very broadly, it applies when you're dealing with non-functional expressions: with works of authorship (such as literary, artistic, or musical works).  But what does that mean from a practical perspective?  How do you know whether to go for Copyright or some form of patent protection? 

When we think of a patent – we generally think in terms of a utility patent. However, in many instances you may have an article in which the particular appearance is important to you – not simply because of its utilitarian function but also because of its aesthetic appeal. And don't forget the issues of cost and time – both of which are significant when it comes to a utility patent. So I want to take you down a path of discovery – of an alternative or additional form of protection that most people forget about….the Design Patent.

When other forms of IP aren't appropriate - don't forget TMs

There are any number of arguments why you should avoid patents altogether – from cost of obtaining a patent to likelihood of getting and keeping an issued patent, to the cost of enforcement. But there are ways of stacking the deck in your favor…and at the end of the day you need patents – especially when you are starting out. It is not a matter of whether to get a patent but how to use it. Learn more about the pros and cons and how to win the patent game.

The alternative: part-time or virtual in-house counsel

There are some things that cannot be outsourced or handed off to someone else.  Your IP strategy - like your business strategy - is one of them.

If you are a CEO or about to launch a startup or consider yourself an entrepreneur, there are 3 things that will define you …that will dictate your level of success: Fortitude; a plan, and your ability to anticipate risk.

I have listened and am responding: By launching the first and most comprehensive one-on-one C-Suite course to teach you everything you didn't know about successfully structuring and leading a company to maximum profit.

If you look at the number of patents that auto makers like Tesla, and autonomous car developers like Waymo are filing, there is a discrepancy to the total number of patents being filed in this space.  The question is why? Let's look at this particular industry and the impact that patents is having.