Patent Research and the Start-Up: Pivot Quicker, Save Time, Invest Smarter

At SPSG, we are the patent research destination for many start-up companies. This article is part 1 of a multi-article series focused on ways we have seen, first-hand, how effective patent research can benefit start-up companies. Specifically, in this case, we will focus on early-stage invention discovery and patentability studies, and a particular start-up client of SPSG.

It is often the case that the IP position of a new technology can greatly impact its commercialization success / potential. It is imperative that a start-up perform early-stage IP assessments, prior to investing substantial resources, time, and money into a new technology. Early-stage IP research can help precisely calibrate a technology against the competitive environment, which may result in, for example, rethinking the technology’s application, which is certainly a less costly decision to make when done at an early stage. At SPSG, we often partner with our start-up clients, assisting them throughout the invention discovery and commercialization process. Aside from our IP expertise (former USPTO Examiners, in-house searching, law firms, etc.), our technical backgrounds (from leading science and engineering universities – MIT, Rutgers, PSU, etc.) help us to become intimately familiar with the technology and thus able to effectively comprehend what competitors are doing and where there could be opportunities to carve a niche (this will be covered in-depth in our next article).

Once an early-stage technology is developed, we find that quicker, more cost-effective patentability studies can provide useful guidance in most cases. While a patentability study will not generate comprehensive data in the form of what the current state-of-the-art is, a patentability study will answer the question or whether the early-stage technology is taught in the prior art, and who some of the major players are in the field (which can be useful in determining licensing partners, etc.). If dead-on prior art is located at this early-stage, this can provide powerful guidance to the start-up, enabling a quicker pivot or rethinking of the technology, thus enabling smarter decision-making and time-saving, which every start-up needs to maximize. Partnering with an IP search firm early in the invention discovery process is thus critical in understanding how the early-stage technology fits in the patent landscape and whether it makes sense to pursue commercialization of the technology, etc.

We recently had the pleasure of working with Colorado-based energy start-up, Affian Solutions. Here is what their CEO has to say about our work together:

“When prioritizing between start-up/business duties– outsourcing of invention discovery and patentability tasks is valuable. [SPSG], with its thorough and quick results, expedited our invention process– helping us make important decisions faster, making pivots earlier.” – Kyle Prawel, CEO, Affian Solutions

The Benefits of Patent Searches for Startups

Even though technology startups operate on bare bones budgets, obtaining a search early in the development process can be beneficial in several ways. A patentability search will provide startups with a list of the most relevant patents in their technology space. This list may be used to determine whether the startup’s technology may be patented. If none of the patents squarely cover the technology, then the startup may have patentable technology. The startup may then provide this search to a law firm drafting its patents as a means to carefully write the patent and claims in a manner that distinguishes the technology from existing patents while also being as broad in coverage as possible. Moreover, the startup may provide this search to investors as evidence of the value of their technology by showing that no existing patents or non-patent literature (e.g., products, articles, published designs, etc.) cover the technology.

A landscape search provides an overall perspective of all prior art in a specific technology field. Since this is a broad search that typically results in a large number of references, SPSG will provide categorization of the state of the art of the invention, so the results will be organized and easy to view as a “landscape.” This will give a thorough view of the relevant technology space to the startup.

A freedom to operate search will provide reassurance of whether a troll or patent owner has a preexisting patent that can be used to sue the startup. It is important for startups to understand that selling their technology is not required to be sued for patent infringement. Merely making, using, or offering to sell the technology may be sufficient. Another important point to know is that the statement “software is not patentable” is far too simplistic and ignores the fact that many software oriented technologies are already patented prior to the recent case law developments. A freedom to operate search provides startups with a list of patents having claim language that the startup’s technology may infringe upon. The startup provides SPSG with the features of the product or service they are seeking to clear, and we conduct a search for all relevant references, highlighting pertinent claim language.

SPSG offers reasonably priced searches for startups. Although attorney fees routinely exceed $10,000 for patent matters, an initial search costs far less and can provide direction for an intellectual property strategy going forward. Moreover, having a thorough search, such as those provided by SPSG, provides investors with confidence in the technology and could be the swaying factor for the investor. Finally, the startup will have a list of patents that may be used to threaten a troll if one should threaten to sue. If the startup has a list of patents from before the troll’s patent, one or more of the patents may be used to invalidate, or essentially eliminate, the troll’s patent if certain conditions are met. Threatening to do this and citing the patent or patents that came before the troll’s patent may intimidate the troll into stopping its attempted enforcement of the patent.

For more information, please feel free to contact our offices at 626-432-7292 or email me at stacia.stokes@shermanpatentsearch.com