I am looking forward to Indie Bio’s demo day this week. I work with a number of the companies there. The excitement and the tension has mounted as the big day approaches. This is the day each company will have a short public presentation about its technology in front of a fairly large audience. I have a similar event on my calendar for the UC Davis Venture Catalyst program in January.
Some of the worry leading up to the event, whether explicitly recognized or not, is the dilemma about what to present and how the presentation could impact the company’s potential patent protection. I was reminded of this dilemma by a very informative webinar put on this week by JA Kemp & Associates. I particularly liked the presentation because it brought a European viewpoint to the topic; valuable because how public presentations impact IP rights varies by country.
Let’s get right to it. Demo day presentations are a public disclosure in the eyes of the patent office. And while you may think that there’s only so much the selected audience will see and remember, the digital age has made these presentations much more public. Audience members take photos of slides, video presentations and post excerpts on social media and websites. All of these become searchable and accessible, not only to patent offices and patent challengers, but to your competitors.
One tip – writing “confidential” at the bottom of a slide that you present publicly doesn’t make it confidential. I am only half joking here. I see this quite often. Maybe the footer just gets left over from a different presentation, but think about it. The audience isn’t under any confidentiality restrictions, so saying “confidential” is like kids who run naked through the living room and cover their eyes, thinking this way their parents’ guests won’t notice the lack of clothes.
What can you do to protect patent rights at these demo days? Advanced planning usually goes a long way here.
- Give yourself some lead time. If you start planning your presentation well in advance, you can outline what concepts are already public, what aspects are patentable and worth protecting and most importantly, what might be best to leave out of the presentation to maintain your competitive edge.
- File a provisional patent prior to the presentation. Make sure that the filing fully covers at least everything you intend to present and that you (or you working with your IP counsel) have determined merits patent protection. This is where advanced planning really helps. Writing a provisional patent a few nights before the big day usually means a minimalist approach to the filing and may result in a narrower scope of protection when all is said and done.
- Identify key trade secrets and competitive edge information. Not everything is patentable. Some concepts and techniques are more valuable as trade secrets. In some cases, material may be patentable, but now is not the right time to file a patent application, for example, because further work is needed to full conceptualize the full scope of the idea. In other cases, the ideas may be fully developed, but you are strategically holding back from filing to give yourself some more time before the publication of the patent application (18 months after filing). The publication would alert your competitors too early before you can get a strong enough lead in development. Once you have identified what information falls in this trade secret/competitive edge category, you can determine how best to remove this information and yet keep your presentation engaging.
- Put on a disguise. Okay, not the fake mustache and a big hat. Make a disguise for the key information you haven’t been able to protect (e.g., you didn’t have time to file that provisional application). When making your pitch deck, give your protein, therapeutic molecule or the like, a code name in the tables and graphs you present. Don’t show the molecular structure, protein or nucleic acid sequence. If you work on a device, hold off showing the inner workings, or at least keep the level of detail slim so that the key features are not on display.
- File a patent application after the presentation. There are a number of reasons for filing post-disclosure. If you didn’t have the opportunity to file an application prior to the presentation, there’s still time in most countries. The US, Japan , Australia, Canada and many more, provide a “grace period” after an inventor’s disclosure, where the disclosure will not count against the inventor as prior art. In the US, the grace period is one year. Another reason to keep post-presentation filing in mind is the evolving nature of your research and your presentations. Did you disclose something “extra” from what is in your previous applications or are you planning to do so? The original filing may not provide a priority date for that later disclosure. But you can still protect your revelation by a subsequent filing (e.g. an update to your earlier provisional), the grace period is useful here too.
For planning purposes, it may be helpful to look at this in steps:
- Well in advance of demo day, identify what you can protect and make a plan to get your patent application on file with plenty of lead time.
- A few weeks before demo day, look again at what patent applications you have filed and what you have planned for demo day. Make sure your strategy covers everything.
- Demo Day – Have fun and good luck!
- After the demo day excited has subsided (e.g., the following week), re-look through your presentation and think about what you said on stage and publicly to investors and other interested individuals. Determine if any additional filings are warranted while the grace period is still available.
The content of this blog is for informational purposes only and does not offer legal advice. Circumstances are fact-specific and you should consult an attorney for legal advice concerning your individual issues.