The Five Ws
I was recently asked to speak on a SheStarts “Law 101” panel for startups, with a focus on intellectual property and software patents. In preparing for this event, I realized how important I believe it is for anyone considering investing in patents to interrogate themselves as to their business objectives/motives as early as possible. That means really digging into the details of the five Ws:
Who are you? Whether you’re an inventor in a garage or in-house attorney at a large, innovative organization, it’s important to ask where this effort is going. Are you the kind of company who wants to go solo, bootstrapped for as long as humanly possible? Want to get angels and then VCs on board ASAP? Plan to keep this private or to IPO? Going up against litigious competitors or contributing to an open source ecosystem? All of that impacts your decisions regarding IP.
What did you invent? Honestly. What have you come up with that no one else has developed in all the long history of people sitting at their computers, coding away late into the night? What’s the competitive advantage? What’s the hook? Because if you are not able to identify a specific, technical innovation supported by solid reasons why no one else has arrived at this solution, you are going to have a challenge pursuing the kinds of patents that will help further your business objectives.
Where are you in the innovation process? Is it so early that you have an idea and a good plan for testing whether it will work? Far enough along that you’ve figured out how you’ll make this work, even if you don’t yet have a prototype? So far into it that you have sold products and are now developing additional innovations, improvements over your original ideas? All of this impacts your IP strategy as well.
When do you plan on disclosing the invention? This is a really critical question that a lot of innovators don’t know to focus on. If you plan on talking about the invention – whether it’s to your two best friends at an upcoming BBQ or to 100 of your new best friends at last week’s hackathon, patent offices in the US and around the world really frown on the sharing of inventions and over-sharing can lead to a prohibition against later filing of patent applications.
Why do you want a patent? To check a box? For resume building? As part of a multi-pronged, strategic approach to running a company? Patents are expensive, time-consuming resources to pursue. They can be the best, most valuable assets a company owns – or a complete waste of time and money. Figuring out your internal motivations for pursuing one can help you understand whether to start down the path and how far to go.
There are no wrong answers to these questions and they’re only the beginning of the conversation you and your team and your lawyer should have. It’s your business, your innovation, and how you define yourself and your objectives is personal to you/your team. But undergoing this type of analysis can help you ensure that you are making the best decisions possible in many areas of the business, including your IP strategy.