William Rosellini

Protecting Intellectual Property

Intellectual property (IP) is the primary asset that investors will be agreeing to invest and should be managed as such. An IP capital strategy is simply a plan—consistent with the company’s capital strategy and product development plan—to acquire IP assets and leverage the most value from existing IP assets. Investors will require an extensive understanding of how your Company’s IP enables future protection of the business and will want to see a sophisticated approach to understanding how you have spent capital on IP in the past and your plan for IP with the future capital raise. The return on capital analysis for intellectual property activities is critically important. The definition of value is assessed in the context of the business goals.

There are usually drafting, filing, prosecution and maintenance costs associated with acquiring and managing IP. A company should consider what their return on investment is for any money spent on IP, and take into account any cash-flow management issues. Potentially, depending on the overall budget, the money may be better spent elsewhere, such as monetizing a web-based technology product or service faster.   Here are some of the tools and workflows that need to be coordinated by the CEO and won’t be handled with patent counsel in advance of a capital raise.

  • Patent literature – compare the patent with other patented and patent-pending technologies and assist patent team. In addition to the artificial intelligence (AI) based analysis, experts will perform searches to provide a report on the current patent landscape.
  • Non-patent literature – Our team will also analyze non-patent literature in similar space as the patent to provide a report on the current landscape of technologies and non-patent literature.
  • White Space Analysis for Intellectual Property – ascertain from patent literature and non-patent literature the prior art landscape to address the following:
  • Perform analysis of the applications and identify areas for patent expansion for patent claims creating opportunity for strong out-licensing.
  • Articulate arguments relevant to freedom to operate for the issued patents and associated divisionals and counterparts.
  • Assess and articulate strategy for patent prosecution including additional claims
  • Invention strategy – Assist with inventive ideas around the Patent that could potentially become the basis for future applications in the same Patent family, such as a continuation or divisional applications and/or enhance the intellectual property position for the current Patents.
  • Licensing strategy – If applicable, identify patents with potential for enhancing the overall intellectual property portfolio. In considering the licensing strategy the following competitive products/companies will be considered:

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