Spending a lot of late nights with your startup colleagues developing a product with cutting-edge features can prove frustrating when those features end up in a competitor’s offering. At some point, once your startup begins to gain momentum, protecting your IP becomes yet one more thing to worry about. But it doesn’t have to be a nightmare — here’s a high-level overview of how to identify and protect new, potentially patentable inventions.
1. Check employment and independent contractor agreements
Look at your employment agreements — and agreements with independent contractors — to make sure that they have an obligation to assign their rights in any inventions that they develop in the course of their work to your company. If their agreements with you don’t explicitly obligate them to hand over those inventions, it may be difficult for you to obtain a patent on them, particularly if that employee or independent contractor no longer works for you.
2. Circulate an Information Disclosure Form
The first step to getting a patent is identifying ideas that are potentially inventive and patentable. Learning about and understanding your employees’ inventions as early as possible will enable your patent lawyer to draft earlier applications with more accurate and comprehensive disclosures, which means stronger patents. No need to reinvent the wheel—ask your outside patent lawyer (get a referral from your corporate lawyer or VC if you don’t have one) for a PDF form and send it to your team.
3. Create a “patent team” to quickly review new inventions
Once your employees start filling out Information Disclosure Forms, you need to figure out whether these new developments are worth patenting. It’s best to include a diverse set of people in this discussion—a person from management (it can be a founder/CEO but just as often is a CFO), engineering, and marketing/sales, at a minimum. It’s important to keep the marketing and sales folks in the loop on patents because they often are the first to disclose new inventions outside the company. When your patent team agrees that a particular development is worth patenting, contact your patent attorney so that he or she can determine whether it is indeed patentable and, if it is, to prepare and file a patent application.
4. Give cash incentives for patented inventions
Sometimes your team may need a bit of encouragement to think about whether their product development is also generating patentable inventions. You may want to consider good old-fashioned financial incentive, in the form of bonuses paid when a patent application is filed and when that application matures into an issued patent.
5. Keep it all organized
Once you have started to seek protection for your patentable inventions, it’s important to keep everything organized so that you know what IP you have. Keep copies of your IP-related documents (e.g., employment/contractor agreements for inventors named in your patent applications, the Information Disclosure Forms, issued patents, technology licenses and other contracts) in a well-organized file. This can be as simple as a folder on your computer with chronologically ordered PDFs, or a sophisticated document management system — what’s important is that you have this information within easy reach for when a potential investor wants the due diligence on your IP.
Nitin Gupta is a Co-Founder of LawPivot, an online marketplace for businesses to receive crowdsourced legal advice from lawyers. Eric Hutchins is a patent attorney at the law firm of Kilpatrick Townsend & Stockton LLP in Menlo Park, California.