Investor for IP - what should be our strategy?

You probably have two choices: 1) somehow get enough funding without your investors - borrow the money from family, friends, mortgage your house if need be, think outside the proverbial box; 2) file provisional patent applications which are less costly to file but beware that even though they are provisional applications, they still need to completely, accurately, and thoroughly disclose the invention because your provisional applications will serve as priority documents for your later-filed non-provisional or PCT applications which must be filed within one year of the filing of your provisional applications.

Hi,

It isn't a guarantee that filing an application will result in a patent, but you could file under the Track I accelerated process which gets your application examined faster. The timing of the Track I isn't guaranteed either, but I have a startup client who did this, and we had the final OA within the first year v. waiting three years to receive the first OA.

For some reason, this option never seems to cross startup minds, but you can buy someone else's patent assets. A patent has property rights and can be sold, bought, leased etc. You could do a search and buy up any patents in your area. Doing a search is a good idea, because it reduces risk. You may learn about a patent that would prevent you from filing in the first place (before investing money and time).

Some startups do not know how comparably cheaper it is to get trademark protection compared to patents, and that may be attractive to investors (IP protection).

Hope this helps,
Mary

I have many startup customers. Many have been in a similar catch-22 situation as you (limited budget to get patent applications filed, but require filed applications to get funds). I have been invited to a number of investor meetings for my startups to discuss IP strategy to the potential investors (since I offer this as a free add-on service, my startups often proactively include me without being requested by the investor). From my experience investors have different levels of sophistication when it comes to IP. Most investors are looking for *filed applications* rather than granted patents, since most realize it may take 2-3 years to get a notice-of-allowance (if the technology is indeed patentable). So you may want to clarify what the potential investors are looking for. I have seen investors be fine with provisional patent applications, and other want commentary on the claims and the subject matter of a non-provisional patent application. Some investors want to ensure that the patent counsel has the proper skill to ensure well-written claims (e.g. for software patents have counsel with demonstrated experience with software applications and knowledge of "Alice"). Over the last couple years it seems that for certain technologies, a filed non-provisional patent application is a required check-box item for some investors. If you decide to do just do a provisional make sure that it is done properly, I have seen investors ask to see the provisional only to see a one-page application that would cause problems with priority claims and the meeting ended before it started. When selecting your patent counsel, look for someone with experience in the technology area of your invention, try to work on flat-rate, ask to see if counsel will accept a reduced amount with the remainder payable when investor funds are secured. As others have suggested, get some funds first to file at least one application and have a solid strategy for future applications (e.g. continuations, CIPs, etc.) so that if the investor is looking for a patent family, you at least have a palatable answer. Be able to answer questions on international and foreign filings. Finally, make sure that you are aware of the ramifications of public disclosure of your invention before you have patent protection (both from a "12-month US perspective" and from an international filing perspective).