A start-up company, like life, has its ups and downs. In forming my own venture, I see this first hand. There are super busy times when it seems I might have taken on too much and times when disappointments arise, or there are lost opportunities and problems not solved. On the flip side, there are the highs of working with new exciting technologies, finding creative solutions and resolving sticky issues. The variety is a bit like a roller coaster, so enjoy the ride – or so my husband says.
In all the ups and downs of developing your idea into a company, it can be easy to forget about an IP strategy. Not only does your IP miss the fun of the ride, but you may end up in one direction and your IP pointed to another. Here are a few housekeeping tips:
Calendaring. Your patent prosecution attorney (whether that be in-house counsel, an outside firm or maybe even university attorneys depending on your situation) keeps a calendar of due dates. Many will send reminders well in advance of upcoming deadlines, such as to convert a provisional application to a PCT, amend claims, or respond to the patent examiner’s rejections and comments. Sometimes these reminders are so far in advance (e.g. several months), they are easily lost in the commotion of day-to-day business.
- Start your own IP calendar – note not only the due dates, but set aside target dates when you will look at the materials and provide your input as needed.
- Plan for provisional to PCT conversions – this is the 12-month window where you can add data. Plan at the outset what experiments are intended and when they can be included. Put some markers on the calendar to check-in on R&D progress and update your patent attorney.
Directional checkups. Research rarely proceeds in a straight line. In fact, sometimes a contributor to the roller coaster ride is the progress, unexpected turns and twists and gut-punches of R&D.
- Quarterly reviews – for on-going R&D where patent applications are either in the works or already filed, check in from time to time on where R&D is sitting as compared to the focus of the IP. Assess whether there are changes in direction, improvements, new results or negative results that need to be accounted for in the IP strategy. For example, dosing regimens may change as clinical trials progress. New ideas may emerge for combination therapies. New devices or techniques may emerge that are of use with your diagnostic methods.
- Invention disclosure process – have a process to collect new ideas and new directions undertaken in R&D. Generally, a written/electronic record of the idea, the inventors, the date of conception, and what experiments have been done as support can help the tracking of potential new inventions and what might be worthy of patent filing or protection as a trade secret.
- Perspective – From time to time, a high-level view of the company’s business plans can be helpful to understand whether the company’s existing IP is in alignment. Involving functions outside R&D, with a view to the company’s current and future business plans, can provide a perspective for shaping and re-aligning IP strategy.
And while you are on that roller coaster ride – hang on, breath and maybe when you do the upside-down loop, you’ll get a new perspective to incorporate into your strategy.
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.