When talking to investors, how should we present our patent strategy?

First, check with your local incubators or economic development agency to see if there are local law firms that will work with you for free or at a significant discount until you raise your capital. The objective typically would be to have a provisional patent application filed prior to your discussion with investors, especially since many investors will not sign CDAs. Therefore the only way to protect your idea is to file the application prior to your discussion. Otherwise you are left to describe what you are doing that is unique in only vague terms or by results of experiments and tests.. If you have not filed, you should have a notebook that fully describes your invention, signed, witnessed and dated by someone who is not an inventor, but who understands the invention. Then provided the investor signs a CDA, you can give them some details on the invention. Otherwise, you should only provide them with results or data, and not describe the invention in detail, but maybe functionally.

Next, you need to do a thorough patent search. Using the USPTO search function, Google Patents, WIPO or any of several available databases to inquire using the key works that describe your invention. Then study the specification, examples and claims to see if in fact your technology is unique. You want to make sure that you don't "see your invention" in the claims of third party patents. Also, review pending applications. You will get a better idea of who your competitors might be with this analysis, and which companies are filing patents close to your.

Also, look at some of the prior art cited in the background or specification to see closely related art. Once you have a good idea of what others are doing, you can also begin laying out what claims you think are unique. Once that is done, you can draft a specification. If you have a current or ex research faculty member as an inventor, have them write up the invention as if they were writing a manuscript for publication. Also note that there are a number of good articles on drafting patent applications aimed at scientists and engineers.

Next you want to make sure that the examples or tests that you will use in the patent actually prove the claimed subject matter. What experiments have you done with your prototype to show that it works the way you suggest?

Finally, outline what will be filed in the first provisional and layout what work you will do in the next year to generate data that supports your current claims or will expand those claims Your strategy will include filing the application in all PCT countries (remember that some countries are not in the PCT - Taiwan and Argentina, for example). Anticipate which foreign countries have the potential for large economic impact to the business and consider filing in those countries at the national phase about 30 months.

For further strategy, the key is understanding how to protect your technology, product and market niche going forward. Analyze your technology its prototype and the anticipated scaled up commercial version to see where new inventions are needed and plan for when you will have the data necessary to support a new patent filing.

Many attorneys working with early stage companies will meet and strategize with you for 1-2 hours for free, which will help you thing about what you will file, how to get the data to support the claims, and when to file.