Value and Protection of Intellectual Property

Value of Intellectual Property in Securing Funding

 

On May 8, 2014, I was invited to give a impromptu presentation for the monthly meeting of the 128 Innovation Capital Group, at  Constant Contact, 1601 Trapelo Road,  Waltham, MA, on the subject of  “Value of Intellectual Property in Securing Funding:  how to obtain it and what value it has for your company”.

 

 

During my presentation as the opening speaker, I focused on three important areas of intellectual property that can have great value to a company but can also be cost effective to a cash-strapped startup.

 

Those three areas of my main focus were –

 

  • Trade Secrets

 

This area of IP enables a company to protect any advantage that it may have in business, whether a “secret sauces”, or customer list or financial records.  The key need is that secret be protected internally and externally by means of confidentiality agreements.

 

  • Copyrights

 

This protects works of the company or its employees from copying and piracy by others.  These works can be literary, brochures and product descriptions, they can also be art work or musical competition.  It can also be computer programs.  For additional Federal protection, filing with the US Copyright office is necessary, ideally before publication.

 

  • Trademarks

 

This protects the good will of a company, its brand name or the brand name of products or services marketed from those who would try to use for their own benefit the trade name you’ve developed.  Here again, there are common law rights to a trademark but greater rights obtain with a Federal filing with the US PTO.

 

Each of these three key areas of IP protection can be obtained and  value built in your company at relatively low cost.  I then began the discussion of the most costly but especially in life sciences, the most important area of value in IP

 

  • Patents

 

These are used to protect the ideas involved in novel scientific inventions.  These are the most costly protections and also require public disclosure of the invention.  I suggested in my remarks that because of their cost, it is often best to approach patents in stages.  1st  –  conduct a novelty search of the current state of the art to assure there is a reasonable chance that your invention is sufficiently novel to be able to obtain protection, 2nd – File for a provisional patent that establishes your priority and protection for one year.  3rd – undertake efforts at commercialization, and then complete the patent process by converting your provisional into a full utility patent within the 12 months if there is sufficient commercial promise.  I noted that about 95% of issued patents are never commercialized, so it is useful to test the market first before spending all the money to complete the process.   Other speakers that morning further covered the subject of patents.

 

 

All three speakers at the May 2014 meeting of 128 ICG concluded that in the case of biotech and life sciences companies where the novel scientific invention is critical to the company’s survival and growth, patents are a necessity, but in software, e-commerce and service business, the three areas of IP law the subject of my discussion were of potentially far greater value to companies seeking funding.

 

 

For more information on the Copyright portion of my 128 ICG presentation in May 2014, see these slides from an earlier presentation I gave for another group (MDG – Medical Development Group).  LINK:  https://robadelson.wordpress.com/2012/07/30/using-copyrights-to-protect-your-software-literary-and-artistic-works/

 

For those with questions on that or other issues of intellectual property, please do call or email me at radelson@engelschultz.com

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