Leaders of emerging companies must make many critical decisions at the outset of their company’s growth cycle, not the least of which is whether to seek and obtain patent protection for the company’s core technology.

Seeking and obtaining patent protection judiciously up front can pay handsome dividends down the road when attracting investors, engaging strategic partners, and exiting. Alternatively, not paying proper attention to these matters at the outset could have permanent negative consequences for your company’s downstream value.

Below are 3 critical patent-related decisions an emerging growth company must make at the earliest possible moment in its life cycle:

  1. Thoroughly Evaluate and Protect Core Technology

Whether your company centers its model on small molecule or biosimilar drugs, artificial intelligence systems, medical devices, cannabis technologies, software, semiconductors, or other technologies, it is likely that some or most of the technology that your company is built upon is patentable subject matter.

Evaluating what you have and determining what you should seek protection on, what you should maintain as a trade secret, and other considerations, should be made as early on as possible. This is especially so in light of the numerous circumstances under the patent laws of the U.S. and other countries that could affect your ability to obtain patent protection later, including with regard to publishing, sales and other activities.

This evaluation process, if diligently conducted, will pay dividends down the road in most all aspects of your company’s lifecycle, ensuring your company’s initial core technology is protected, satisfying investors, and laying the foundation for future growth.

  1. Carefully Evaluate Competitor Patent Activities

If you are competing to gain market share and grow based on your core technology to provide maximum return to company investors, the law gives innovators like you the option to obtain patent protection, which can be a very powerful tool to exclude others from practicing the inventions you develop for decades.

Being bullish with respect to obtaining patent rights is a smart step toward the goal of winning in competitive markets.  Indeed, why allow competitors to copy your innovations while taking a share of the market you are seeking to obtain?

When entering a new space, you should assume that others in that space have utilized the patent system to gain an advantage, and you should evaluate the filings to determine the scope of protection obtained or otherwise being sought.

It is advisable to conduct early prior art searches to understand the scope of the prior art both for patentability purposes as well as to identify the owners of those applications, who may be direct commercial competitors, institutions, or other entities or individuals who may affect your ability to operate in your space.

  1. Develop and Execute Short-Term IP Strategy; Maximize Value

Taking at least the above into account is crucial to developing an effective immediate short-term IP protection strategy, and this process will serve as the platform for developing and implementing your long-term strategy in building your company’s patent portfolio.

Critical to both approaches is to seek to build your portfolio in a manner to obtain claim sets covering (1) your core technology and activities and (2) key competitor products and activities.  This process should also allow you to gain awareness of third-party patents and pending patent claims that may relate to your current or planned activities.

Taking these steps early will maximize your company’s opportunities to secure and build upon your patent portfolios, setting the stage for maximizing the value of company and returns to its shareholders.


The information contained in this posting does not, and is not intended to, constitute legal advice. If you would like to obtain legal advice relating to the subject matter addressed in this posting, please consult with us or your attorney.