So here we are in 2021.  This is not the typical new year.  The past year has not been an easy one.  It has taken a toll on all of us, and likely will continue to do so for some time to come.

Even in the context of start-up biotech companies and founders, it has been a year of stress and adjustments.  Work changes – working from home, shutting labs, re-opening labs, working in shifts, in masks.  Home changes – new routines, whole families sharing one space for work, for school, for living.  Isolation – loss of contact, few or no in-person meetings, no handshakes, a world on-line where everyone is typically an image of head and shoulders. All of us figuring out how to make and grow personal connections in the virtual world.

I could say the new year is so atypical and the world so topsy-turvy that one should set aside the usual mundane considerations and just look at the larger world issues.  But I don’t believe that.  Sometimes a bit of compartmentalization and a focus on small goals can provide benefits – aspects that you can control, a feeling of moving forward, and an investment in the longer term for when things turn right-side up again – and they will (it just takes time).

The Check-up

One of the items that I think gives a good start to the new year?  The regular service appointment.   Like my car – I just took it in for its 5000-mile service.  Some may scoff at these regular checkups. But with almost no major repairs for the last 15+ years and over 220,000 miles, I give a fair bit of credit to this regular checkup routine as well as the solid build of the car.

Building a strong and competitive-savvy IP portfolio strategy is a lot like car maintenance.  It needs a solid foundation and then regular checkups.

Let’s assume you have starting foundation of an IP strategy.  You may have filed a provisional patent application or two, licensed some technology from a university, or maybe you are farther along with issued patents and new filings coming along.  What’s the plan?   Look at short-term – the needs for the next 6-18 months and long-term – protecting the lifecycle of your product.

IP Plans in 2021

Where are things now?  Particularly given the disruptions to lab work, how does this affect your IP?

Do you have a provisional application filed early in 2020 for which you had hoped to gather data over the 12-month period before filing a PCT application?  Are you where you need to be? Or would it make more sense to file a new provisional application with a later priority date but allowing more breathing room to develop experimental support?

Do you have a PCT application that is slated to publish soon?  Give some thought to whether your current R&D developments have significant overlap to warrant filing a new provisional application before the PCT publication to avoid prior art issues.

Some companies like the numbers – file a certain number of applications per year.  Not one of my favorite strategies.  If you have this approach, you may find you have made promises to investors or board members that are difficult to meet, especially given the adjustments over the past Covid-filled year.  This may be an opportune time to set aside this numbers strategy and focus on integrating your action plan for IP filings with your current business goals and product development focus.

Looking towards the horizon

Long-term considerations – the question of where do you want to be in 5 years, 10 years, 20 years – but now let’s look at this with an IP perspective.  How do you want your products and your company to be protected in 5, 10 or 20 years?  Can you envision and convey a long-term outlook for your IP portfolio that makes your company attractive to investors and potential partners?

Food for thought:

  • What is protected?  What are the boundaries of that protection? Does it fully cover your current product and variations for future developments? Will it ward off competitive copy-cats?
  • For how long will the protection last?  Consider how layering different patent filings over time (compositions, methods, combinations) can create a lifecycle of IP protection.
  • Where are you protected?  As an early start-up, your budget may dictate the number of countries in which you file.  As you grow, revisit these choices for your more recent filings – you may need to expand your geography.

Developing a routine

There isn’t a one-size fits all plan.  The action plan you choose now (or chose in the past) may not fit down the road.  It comes back to the regular maintenance. Getting in a routine of a regular checkup allows you to reassess your IP portfolio and tailor it as your company matures. The new year is a great time to start new habits – consider making an IP checkup one of your New Year’s resolutions.