This week, we had Anthony de Fazekas, Partner at Miller Thomson presenting, “The Startup’s Guide to creating valuable IP”.
Anthony is an IP strategist and patent agent and had some great advice for the JOLT companies.
Key IP that requires attention is: possible patents covering aspects of platform/technology, and trade-marks covering brand elements such company name, domain name, product names, logos, etc.
Pick a great name, build a great brand.
The company with a good name is going to get ahead much faster. You want others to remember what its about, and have the brand conjure up a memory.
Key IP Messages:
- Search trademarks on your own, looking for use of similar brands in connection with related products/services or “famous” brand.
- File one or more trademark applications.
- Regarding patents, obtain advice regarding an “IP strategy” to identify valuable IP, and develop an action plan to protect and build value.
- Learn how to behave like a big player, when the time is right.
- Seek advice on deferring IP protection but without destroying value or leaving significant value on the table (if possible).
- Patents can be expensive but aren’t initially expensive.
- 30 months is typically when it gests expensive.
- You should file only ONE patent to start.
- Build patents that are as strong as possible.
Benefits/Risks of Patents:
- Validation of differentiation of value proposition.
- ‘Chilling effect’ while startup gains traction.
- Bargaining chip as alliances/ consolidations emerge
- Clear bump in valuation.
- ‘Perfect storm’ if patents include claims that it is difficult for competitors to do without…
- This part gets expensive: but we can push through disruptive claims
- There really are ‘hard to patent’ domains.
- If company does not attract enough money or scale quickly enough, and company wants to patent in too many countries…things get too expensive too early.
- The process is time consuming.
Remember, almost every company needs IP, and will wish they filed IP at some point – it’s all about timing. Get the right patent team and create a real IP strategy. Protect your real innovation and don’t worry about the competition!
Anthony de Fazekas practises in all areas of information technology (IT) law. He drafts original patents for IT companies in a wide range of technology areas. Mr. de Fazekas has handled all aspects of high profile in-bound and out-bound technology licensing transactions and has developed cutting edge legal templates for numerous significant IT companies. He also advises IT companies and research organizations in maximizing the impact of their R & D activity, for example, “IP audits” and “IP Portfolio Reviews”.