How To: Build an IP Fortress Overview
Russ Wilcox
Partner at Pillar VC
Protecting intellectual property is a crucial job for any start-up whose competitive edge comes from innovation, particularly those commercializing patentable technical or scientific advances.
Other types of high-tech startups such as SaaS, marketplace, analytical, or service businesses normally would not file for patents, but may rely heavily on trade secrets such as operating procedures, source code, formulas, or marketing methods that are valuable tools to help the company to beat the competition.
Patents and trade secrets are both types of intellectual property, or “IP” for short.
If IP is vital to your start-up, it’s worth learning how to build an IP fortress.
The wrong approach can ruin your company, and the right approach can be worth millions.
IP is an area where Pillar VC has expertise. Half our portfolio companies are commercializing a technical or scientific innovation, often licensed out of universities. We invest across deep-tech fields like AI/ML, synthetic biology, quantum computing, 3D printing and modeling, cryptography, and robotics.
IP was also a major strength for E Ink, the electronic paper display company I co-founded. E Ink filed hundreds of patents and was recognized by the Wall Street Journal for building one of the ten best electronics patent portfolios in the world alongside giants like Canon, Sharp, and Samsung. The E Ink IP fortress has helped the company maintain a dominant market share in ePaper for nearly twenty years.
Of course as the founder of a start-up, you might not be planning to file hundreds of patents, maybe you just want to file one or two. That’s fine! You may still be asking questions like:
- What is the best way to license a technology from a university?
- What do we do if we find out we are infringing someone else’s patent?
- What are some common IP mistakes that founders make when working with consultants?
- How should we set up and manage our company’s patent program?
- How do we maximize the value of the portfolio without spending a fortune on lawyers?
- What legal agreements do we need so we can collaborate safely with partners?
Pillar VC prepared this guide to answer those questions and to help hard tech and biotech CEOs who want to build their own IP fortress.
There are Six Sections
1. New to Patents?
Here are the basics. Learn which inventions can be patented and what information is needed for a patent application in A Primer on Patents.
2. Are you still getting off the ground?
Start with The Foundation – Before You Incorporate. Find cutting-edge technology available for license and spot future patent troubles before you start. If someone else’s patent stands in the way of your new company, we suggest six ways you might resolve the problem. Then we walk through the steps to negotiate a university license and summarize the typical terms and royalties.
3. Just landed your seed money?
The first step is to protect your core IP. Read The Keep – Your Critical First Patent Sprint to understand the castle analogy and why the first 90 days after incorporation are a critical time. We tell you exactly how to run a “patent sprint” that will lock up your core technology tight. Those early super-strong patents, combined with the university IP, will become your most fundamental filings.
4. Expand your defenses
We detail each element of a comprehensive program to manage intellectual property inside a start-up in The Walls – How to Run an Ongoing IP Program. A key tool is a point-by-point Agenda you should cover at every IP Committee meeting. We explain key decisions you are likely to face in each section and offer tips for managing the trade-offs.
5. Protect your IP asset
Drawing on a number of battle scars, we will explain how you should tailor each of your company’s IP-related contracts to stay out of trouble when your company’s IP is shared outside the office. These contracts are your The Gate – Protecting Your IP Outside the Company.
6. IP Disasters
IP theft, receiving a notice of infringement, and fending off copycats and close competitors. If these happen, it’s time for the The Cavalry – Defending Your Castle from Attack.
DISCLAIMER for the entire set of documents: We are sharing only our business experiences and thoughts. This document is not legal advice. You should consult counsel (not us) on all legal matters.
Finally, we very much welcome your comments, corrections, and suggestions at russ@pillar.vc.
