I recently gave a talk for the UC Davis Venture Catalyst program using the titles and lyrics of Beatles songs to point out some guiding points for an IP strategy. This blog is an abbreviated summary of my talk.

Revolution  “You say you want a revolution . . .You say you got a real solution. Well, you know,
We’d all love to see the plan.”

What is your plan? Have you determined how you will differentiate your idea from the competition and how you can protect your innovations?

IP is an important strategy piece for start-up companies.  Particularly in life sciences, where product launch and revenue could be more than 10 years down the road, IP can be your most valued asset.  Investors and potential partners look for IP protection and an IP strategy that provides a clear path to market.  IP rights are also important because you don’t want to find yourself in a situation where you built it but you don’t own it

Across the Universe  “Nothing’s gonna change my world.”

It is not uncommon for start-up founders to head down a path without having first taken a look around at the universe of ideas already out there and at the competitors already at work.  A competitor and IP landscaping analysis can help shape initial ideas into more differentiated offerings.

    

The diagram on the left maps out the patent applications filed and currently in preparation. The one on the right places the company’s IP in the landscape of 3rd party filings (orange Co-1, C0-2 circles) and then identifies open areas (yellow) where there is territory for new patent applications.

Hard Day’s Night   You’ve been “working like a dog.”

What is protectable?  For patents, issues such as subject matter eligibility, novelty, non-obviousness and enablement will impact what you can patent and the breadth of the coverage.  Consider also the multiple layers of protection available, including the compositions, formulations, methods of making, methods of use and combinations with other products and devices.

 

The diagram at the left illustrates exemplary types of patent claims that could be used to protect a platform of therapeutic agents.  In this example, some of the targets and identified therapeutic agents have been previously published and others are new.

 

 

 

You’re Going To Lose That Girl   “If you don’t treat her right, my friend, You’re going to find her gone”

As I would title it: You’re going to lose that IP Protection.  If you don’t consider what you want to protect and when to put that protection in place, you may have unknowingly given up the ability to put any protection in place.  Consider the common types of public disclosures created by start-ups and their founders that can interfere with patent protection:

  • Demo days for incubators
  • Pitch competitions and other pitch settings without confidentiality arrangements in place
  • Website and social media posts
  • Research publications, often prior to start of company (e.g., from university labs)
  • Meeting presentations including abstracts, posters, and oral presentations
  • Published patent applications including company filings (yes, your own published prior art can get you in hot water)

We Can Work It Out

Does your company control the necessary IP rights?  Start-ups often launch out of universities and as a result have shared or in-licensed rights.  Consider the restrictions and obligations these joint rights bring along.  Also be cognizant the scope of rights that have been granted versus what has been retained by the IP owner.

For future shared work that involves another company or a university lab, work proactively to establish boundaries for what can be done with the proprietary information and materials you bring to the collaboration.  Put in place  a non-disclosure/confidentiality agreement (NDA/CDA), materials transfer agreement (MTA) and/or collaboration agreement as needed.  In these arrangements, provide for who owns and controls the IP that will be generated and whether the results can be published and when.

The Long And Winding Road

The life of a start-up company in the biotech/life sciences space is a long and winding road leading from initial concept, through pivots, unexpected obstancles, partnerships, funding and exit options.  IP strategy planning can help support that path and keep it strong yet flexible.  Your IP strategy should blend and sync with your R&D plans, your business strategy, your regulatory requirements and timeline and it should be shaped for your intended exit strategy.

What are 3 things you can do now?

  • Have or get a clear view of the competitor and IP landscape
  • Identify and clearly articulate what makes your innovation different
  • Protect your confidential and trade secret information

In the longer term 

  • Map out a plan for IP protection
  • What to file on and when relatives to anticipated public disclosures
  • Understand what rights you own or have licensed
  • Assess what 3rd party IP you may need to license, avoid and/or design-around to move forward and have freedom-to-operate

 

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.