Intellectual property for start-ups
What are the key considerations for getting IP right from the outset?

Some sources say that 80% of a business’s value is attributable to its IP, both in tangible assets (patent filings, registered designs, trade marks) and intangible assets (know-how, trade secrets, unregistered designs etc.). This means that start-ups looking to maximise the value of their company in the eyes of investors must consider how to grow and manage their IP at an early stage to ensure opportunities to capture it are not missed.

Addressing an audience of hardware-focussed start-ups at Tech UK, Senior Associate Paul Bettridge gave some practical tips for protecting IP from the start. For those considering their IP assets for the first time, Paul’s presentation “Building an IP portfolio from scratch” highlighted a number of key areas to consider:

  • Coverage: What IP should you register? Are your company names, product names and logos covered by trade marks? Should you register your product designs, and if so, how? Are patents critical to your business or an unnecessary expense?
  • Chain of title: Where did your IP originate, and are agreements in place to ensure it has transferred correctly to your company?
  • Licensing: Are you entitled to use any 3rd party technology, including open-source software? Can you provide evidence of the associated licences or written agreements?
  • Freedom to operate: have appropriate searches been conducted, both in respect of your technology and your brand names?

Most significantly, Paul addressed the issue of disclosure and how to manage the difficult first 12 months of a patent filing. Considering the development cycle of start-ups today, Paul said

“it is likely that in developing products or ideas, start-ups will seek feedback from the public on numerous occasions. They conduct beta testing or seek funding on platforms like Kickstarter or Crowd cube. In these instances it is essential to be aware that anything that is disclosed may be difficult or impossible to patent later on.”

In addition to Paul’s session, the event, “Intellectual Property for start-ups: the deep dive” which was held at Tech UK, featured a presentation from Clearview IP and a panel discussion including the former head of IP at SwiftKey (one of London’s most successful start-ups), Gareth Jones.  The panel considered the full lifecycle of the start-up from an IP perspective, and shared first hand experiences of the due diligence process that SwiftKey went through during its acquisition by Microsoft in 2016. Senior Associate Susannah Dragosavac, who assisted SwiftKey in the preparation and prosecution of their patent and design portfolio, shared some insights into the impact of the positive steps SwiftKey took early on which led to a successful acquisition.