Pretend you’re the bus driver. That’s how my dad would start the puzzle. Then he’d proceed:

At the first stop, 8 people get on.

At the 2nd stop, 2 passengers get off and 5 more get on.

A the 3rd stop, 6 people get off and 4 more people come aboard.

And so on, it would go.

Until after some time, my dad would get to the last stop.  He’d then turn to me and ask, what color eyes does the bus driver have? And at that point, so wrapped up in the math aspect of the puzzle, I would forget that the bus driver is me, and that therefore the driver’s eye color is brown.

When you embark as a start-up, it is sometimes difficult to remember you are the bus driver. And as the driver, you need to have a route and you have to steer.  There are no start-ups that work like autonomous vehicles.  You manage the direction.  If you get too caught up in the day-to-day nitty-gritty, you can lose site of the overall strategy.

This hold particularly true for IP strategy.  Start-ups often begin from a challenging starting point.  In some cases, the IP is owned by another entity, such as the university.  In other circumstances, no patent applications have been filed, but there also is a very limited budget. Sometimes, a fair bit of research has already been accomplished and other times, the company starts on just an idea.  How will you develop you IP?

Proof-of-concept

Often some initial research is necessary to demonstrate feasibility of the commercial concept.  These feasibility studies can help support your IP platform as well as provide assurances to investors.  But how broad should the experiments go?  Should they encompass only the products you have in mind?  There may be a rationale for going broader.

A wider approach can help support a broader claim scope.  For example, you may have one or two peptides or a small molecule with biological activity.  Are you able to test some variations that would demonstrate the identified functionality extends to additional peptides or small molecules?  If there are representative structures from a number of subgroups, this can support broader coverage for more structurally diverse molecules and allow claims cover a genus of peptides or small molecules that share some common features but diverge in other aspects.

Additional breadth will provide some flexibility down the road if your product concept morphs or expands over time.  Perhaps the initial protein tested encounters unforeseen technical hurdles.  Broader IP coverage will allow you to turn to the next candidate in line and still fit within your IP protection umbrella.

The added claim scope will also help keep competition at bay.  Broader patent claims can cover products and methods sought by the competition, even if these are not aspects that your company will directly pursue. This opens opportunities for licensing to others, generating royalty income, and have “trading cards” for cross-licensing to give you access to 3rd party technologies of interest.

Balancing the scope

Can you go too broad?  Of course.  There are trade-offs to dedicating R&D to a broad proof of concept endeavor, testing as many examples as possible.

The main trade-offs?  Time and money.  Resources are scarce and what gets dedicated to one project, means it isn’t going to something else.  Too broad on the proof of concept and you might find yourself back in the basic research end of things.

Claim scope can also go too broad when it isn’t supported by a tiered approach.  Broad claims have advantages, but too narrow claims have their importance as well.  IP protecting the commercial products helps protect against copycats.  These narrow claims tend to be more insulated from validity challenges.  This can be helpful, for example, in the case of therapeutics for generic drugs and biosimilars.

Narrow claims can have a second important role.  If you have only a genus claim, a competitor may be able to grab IP rights to certain species or variations through narrower claims.  While these 3rd party products may still fall under your broader claim, this later-filed IP could prevent you from developing additional options down the road.  Thus, if there are particular species of importance, including these, as well as the claims to the broader class can offer tiered layers of competitive protection.

How to achieve this balance?

Here’s where the bus driver role comes in.  It’s a matter of planning.  Mapping out the route:

  • Overall goals (products, methods, platform technologies that cut across products)
  • How will R&D achieve these goals?
    • Priority and order of projects
    • Resources available for each project (depending on expertise available, time, funding)
    • Hurdles and anticipated areas where the route might take a detour
  • What is protectable?
    • Is it patent eligible subject matter? novel? non-obvious?
    • Is it more valuable if kept as a trade secret?
  • Put on the competitor hat.
    • How would you design around the IP strategy you have mapped out?
    • Can you fill in the loop-holes?
    • What is the point where the amount of resources needed to expand the scope of IP protection no longer serves your purposes, where the added incremental benefits don’t warrant the investment in time and money?

This isn’t an abstract exercise.  And bus driving does not need to be, and often shouldn’t be, a solo activity.  Input from you co-founder(s), trusted advisors, research team and yes, your IP strategy advisor too, can be very helpful in getting your bus route mapped out.  Just keep in mind, as the bus driver, you need to have hands on the steering wheel.

 

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.