Having a sound IP strategy in place supports fund-raising efforts by enabling you to address due diligence questions from investors. By answering their questions in a clear manner, you give them the confidence that you have properly considered how IP factors into your business plan.
An IP strategy should never be developed and implemented in isolation. Your commercial plans must dictate how your IP strategy is formulated, and the IP strategy must be regularly checked to ensure that it supports your commercial plans. This is an iterative process that requires constant communication between the two. Without commercial input, one could easily end up with an IP portfolio that is inefficient or not fit for purpose.
To get you started on building an IP strategy, here are some questions you need to ask yourself.
1. DO I HAVE THE RIGHT TYPE OF IP PROTECTION?
Having IP protection in itself is not enough if you are using the wrong type of right or are not protected in a certain market. Hence you need to ask yourself whether your IP rights cover your current and longer term business objectives and opportunities as well as your markets of interest. An investor will most certainly ask you this question as part of their due diligence.
2. HOW DO I MANAGE MY CURRENT AND FUTURE IP?
In addition to creating a strong IP portfolio, you need to develop a supporting IP framework that covers IP generation, securing ownership of IP rights, commercially exploiting your technology through sale, manufacture or licensing, avoiding infringement of third party rights, enforcing your IP rights and defending them from challenges while efficiently managing time and budget resources.
3. HOW IS IP RELATED TO REVENUE GENERATION?
There are many different ways of generating revenue from your IP, such as directly selling products and services related to your IP, licensing your IP or selling your IP. Therefore, you need to consider how your IP protection strategy protects your potential revenue generating streams from competitors. You also need to consider how third-party IP rights might impinge on your ability to make use of those revenue generating streams.
4. WILL MY IP STRATEGY STAY THE SAME AS MY COMPANY GROWS?
There is no one size fits all IP strategy. Your IP strategy and framework can change depending on the stage of commercialisation. As your company progresses, there is a constant need to revisit and evolve your IP strategy.
5. HOW DOES A START-UP'S IP STRATEGY DIFFER FROM A MORE MATURE COMPANY'S?
Initially a start-up might focus on managing IP costs, protecting core technology, seeking funding and growing their assets. Looking to the future, an ‘adolescent’ company might look to expand their IP portfolio through creation or acquisition, have internal IP procedures in place, look towards commercialisation and start to have concerns about freedom to operate. Further on, an established company will have an IP strategy with multi-layered management, investor relations, IPOs, and this strategy will keep evolving with time.
To find out more about how we can help university start-ups develop their own IP blueprint for securing investment, please contact Jason Teng at jason.teng@potterclarkson.com and Sara Holland at sara.holland@potterclarkson.com.
