Startups ‘must discuss IP early’, says Intellectual Ventures patent head
Startups and SMEs should have a “serious” conversation about IP as early as possible to future proof their operations, said a panel of IP experts at this week’s Accelerating Investment for Startups and SMEs (AISS) conference.
Naoise Gaffney, head of patent development at Intellectual Ventures, Martin Yagi, IP manager at First Light Fusion, and Joe Doyle, IP manager at Enterprise Ireland, described how IP should feature in a new company’s strategy, even if protection is ultimately left until another time.
Doyle, who regularly has conversations with startups and SMEs about when and how to protect IP, said: “The earlier a company starts to talk about what’s appropriate for them, the better. Leaving it until some point in the future just leads to problems that are very expensive, even impossible to fix.”
In the 40-minute online discussion hosted by WIPR editor Tom Phillips, the panel delved into the different types of IP protection startups and SMEs can use, the value that can be derived from monetising patents, and how doing nothing can also be an option.
Picking protections
Getting tangible legal protection of your assets in the form of patents, trademarks or copyrights can be an expensive task for startups, especially in an increasingly global marketplace.
If an SME wants to protect their intangible assets without being tied to a patent term or publicising an invention, trade secrets could serve as a key tool in your IP strategy, explained Yagi.
First Light Fusion, which researches and develops inertial confinement fusion for energy generation, was spun out from the University of Oxford in 2011.
“We keep our core nuclear fusion technology secret and patents the surrounding technology. When the core technology is eventually perfected then it will be patented, but not while we work on it,” said Yagi.
The downsides to trade secrets include, unlike with a patent, the lack of tangible recognition of your company’s value.
“Patents show innovation and credibility. It’s part of the complete story that you present to investors,” he added.
Commercial opportunities
The ability to value and monetise IP assets can be of great value to a startup, the panel explained.
Published patents, for example, can establish a company as a key player, Gaffney said: “[Patents] allow companies to point to innovations that they are actually engaged in can help establish a company’s reputation. If you are seen as a net innovator it can position you in a favourable light in the sector.
“It can also help attract investors, saying that you have patents early on can be crucial when looking for early-stage funding. You can also sell patents or license the patents too later down the line.”
What to protect?
If you do decide to pursue tangible protection, a start-up will not have the ability or cash to protect every intangible asset they lay claim to, so deciding what deserves the investment is key.
“An IP audit is a great place to start,” Doyle said. “Having someone come to look at your business through an IP lens and consider the main priorities you need to address can be key to helping you decide.”
A good IP auditor, agreed Gaffney, will try and align the options a company has with its business priorities.
But it came with a caveat: "Just because you can pursue IP protection does not mean that you need to. These processes are time-consuming and expensive,” warned Gaffney.
To protect or not?
Even if you decide that IP protection is not a viable venture for your SME, the most important step is the discussion you have to arrive at that conclusion, said the panel.
“Not everyone needs patents or trade secrets… but understanding what can be done and what you can do to pursue it is a conversation you need to be having early on,” Gaffney explained.
“Making an informed decision to not pursue IP protection is perfectly valid.”
If you decide that some of your SME’s ideas are not particularly worth the investment or exclusive enough to warrant trade secret protection, Gaffney said that a company should not keep the open-source alternative off the cards.
“Maybe it’s not suitable or valuable enough for a patent, maybe you just want to secure the freedom to operate. That’s where putting your information out there in the public domain comes into effect,” he said.
Yagi agreed, adding that choosing an open-source approach in some circumstances has helped boost First Light Fusion’s reputation as an innovative company.
You can watch the full panel discussion and interactive Q&A here.
AISS, which is a Newton Media event, runs from November 30-December 1, 2021.
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