This document discusses developing a minimum viable patent strategy for startups. It recommends that before a seed round, startups should file a provisional patent application and conduct a preliminary freedom-to-operate analysis of main competitors. Before a Series A round, startups should file a full patent application and conduct a broader freedom-to-operate analysis of relevant patents. The document also addresses common misunderstandings about patentability and infringement, and how to choose a patent attorney.
13. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else
3. generate licensing revenue
14. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else
3. generate licensing revenue
15. Why do startups file patents?
1. enforce against a competitor *
2. prevent the patenting by someone else
3. generate licensing revenue
*Takes 4-6 years to get a patent,
and costs $3M to enforce.
16. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else
3. generate licensing revenue
17. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else
3. generate licensing revenue
18. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else *
3. generate licensing revenue
*Patents cost about $40K each.
Whites papers are free.
19. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else
3. generate licensing revenue
20. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else
3. generate licensing revenue
21. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else
3. generate licensing revenue *
*It takes a huge effort
22. Why do startups file patents?
1. enforce against a competitor
2. prevent the patenting by someone else
3. generate licensing revenue
31. How to avoid the Biggest Patent Pitfall
Loss of all patent rights in the U.S. if invention was:
(1) described in a printed publication, or
(2) in public use or on sale in the United States,
more than one year before the filing date of a
patent application.
42. Biggest Misunderstanding of Patent Law
The relationship between:
(a) the patentability of an invention, and
(b) the infringement of another patent.
43.
44. Question: Who can make a frosted light bulb?
Pat. No. 223, 898 Pat. No. 1,687,510
Edison Pipkin
Electric-lamp Frosted light bulbs
50. Question: Who can make a frosted light bulb?
Answer: No one can.
Neither Edison nor Pipkin.
51.
52. Biggest Misunderstanding of Patent Law
1. An invention may be patentable if it can be
distinguished from previous inventions.
2. A product may infringe an existing patent if
it contains all of the elements of a single
claim.
These two issues are independent of each
other.
53.
54. What Do Investors Want to Hear?
1.You have determined what is patentable
(and have taken steps to protect your rights).
2.You have determined whether you infringe
any patent rights of your main competitors.
These two issues are independent of each
other.
55.
56. How to Develop a MVPS
(Minimum Viable Patent Strategy)
Before Seed Round:
1. File a provisional application.
2. Conduct a preliminary freedom-to-
operate analysis on your main
competitors.
58. How to Develop a MVPS
(Minimum Viable Patent Strategy)
Before Series A Round:
1. File a full patent application.
2. Conduct a preliminary freedom-to-
operate analysis on all relevant patents.