Question
Our startup needs to file 2-3 patent applications for which we need funding. However, it seems like investors want to invest only in startup which already have the patents. What should we do?
Answers: 3 public & 1 private
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).
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