Blog 31: How To Avoid The Top 5 IP Mistakes Startups Make

1. Failing to Commit to Intellectual Property

Assuming a startup is an innovation-based company that has a great new invention at the core of its business, the first and oftentimes most critical mistake is not committing early and seriously to intellectual property.

What it means is simply this — company founders, executives and early employees should establish, as part of the company’s culture, a focus and emphasis on IP.

2. Failing to Form an IP Strategy and Plan

Entrepreneurs often charge into their company’s intellectual property, wanting to file lots of patent applications but not knowing what else to do or how to go about it. They know they are supposed to “do something,” and they assume that “something” is to file patent applications. Its important to file patent applications early and often, charging ahead too quickly can lead to inefficient spending and patents that suboptimal patent protection.

3. Neglecting to Thoroughly Research Prior Art

One of the biggest initial missteps is to rush or even skip altogether the process of searching for prior art in their fields. This mistake may be made for any of a number of reasons.

Whatever the reason for neglecting prior art searching, it is a big mistake and typically the first mistake made in the intellectual property process. Researching and understanding the prior art in your company’s area of invention is imperative for two reasons: (1) You absolutely must determine, at least to the best of your abilities within a reasonable budget, whether you might have significant freedom-to-operate issues; and (2) You need to understand what you, the startup company, might be able to protect through your own patent filings.

4. Waiting Too Long to File Patent Applications

In addition to postponing or even avoiding prior art searching, some startup companies wait too long to file their patent applications. They commonly do this to postpone spending money, because they want to compile further research and data on their invention, or a combination of both. One obvious way to control burn is to keep legal fees to an absolute minimum. With intellectual property, however, skimping too much in the early days can be devastating in the long term and even in the short term.

5. Filing Poorly Drafted First Patent Applications

In attempting to file patent applications quickly and cheaply, some startups make big sacrifices in IP quality. Poorly prepared patent applications may be too narrow in focus to provide effective protection or too broad to properly support the claims, they may contain speculative language without sufficient detail about the invention, which may prevent the startup from protecting later inventions, they may simply be so poorly written as to not support the claims at all, or they may have several of these or other flaws.

Weak patent applications that do not cover the company’s core products will be very difficult to “sell” to potential investors and will also indicate to the investors a lack of sophistication on the part of the company regarding intellectual property. Finally, weak filings in the early history of a startup will turn into the company’s most relevant, and likely most damaging, prior art for later filings.

Read full article here: http://www.law360.com/articles/513284/how-to-avoid-the-top-5-ip-mistakes-startups-make