Tuesday, April 24, 2007

How to Draft an IP Strategy

Consistently the weakest part of investor pitches I see deals with intellectual property strategy. An ip strategy is NOT a list of patents and patent applications. Even at the Series A stage, most investors expect to see (and SHOULD see) a proactive plan that accomplishes two things: 1. ensures that your company can use its technology in its business without fear of infringement, and 2. shows how your company may generate royalty revenue from licensing its ip. It is not essential that you have applications or patents in place prior to financing, as long as you have an overall pitch about how you will proceed.

As general counsel of a startup, I got tasked with developing this part of our story. Later, as a VC, I got to review a strategy from one of our portfolio companies in California that for me remains the gold standard of ip strategies. If it had been a man, I would have taken it home and made it breakfast the next day. (Well, taken it home and then driven it to Starbucks the next day for a scone and a vente bold with an espresso shot). Based on these, I've developed my own flashpoints for shaping an ip strategy:

1. Summarize your company's inventions, products in development and planned development. Identify which areas are likley to yield future inventions.

2. Provide your own assessment of the quality of these inventions/patents. A strong patent not only helps defend your company's market position, but also provides you with leverage to extract licenses for other strong ip from companies who infringe your patents. For inventions that have not yet been patented, assess and identify those which are likely to be strong future patents. As a rule of thumb, these generally are inventions from products with longer life cycles and those which (in whole or in part) are likely to continue to be modified into new products.

3. Identify defects in patents filed, and any prior art issues that may be lurking. Defects in patent applications are often the result of using the cheapest agent, instead of a lawyer/patent agent who is an expert in yoru space and can draft correctly.

4. Explain your competitors' patent situations- for example, the relative strength of their portfolio, what trends you see in their filings or expected filings (aka "whitepaper roulette"). A good patent agent will insist that you do some assessment here, so that he/she may draft claims with a view to capturing potential infringers. If there are prior art or overlapping claim issues, a good agent can also draft a work around so that your patent works.

5. Add some blue sky to your strategy story; give examples of how your strongest patents may be licensed for uses outside of your core business' market.

6. End with a basic plan for policing and enforcing your patents and other ip.

Having a strategy is a critical part of your business plan at any stage. It shows the breadth and quality of your long-term thinking about your company and its place in the market. Stop hiding that light under a bushel!

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