When do I need input from an IP Strategist?

The title might sound like a trick question.

“I DON’T EAT BREAKFAST BEFORE SPEAKING TO MY IP STRATEGIST!” I hear your inner voice scream.

While I love the enthusiasm, let’s take a more nuanced view.

For the difference between a conventional patent attorney and an IP Manager / Strategist, see our previous article, here.

Note, for ease, I’m using the term IP Manager and IP Strategist interchangeably to mean “someone that’s responsible for managing an IP portfolio and deciding what to do with it”. I could write another article about the slight differences between a ‘Strategist’ and a ‘Manager’ but I suspect it would excite precisely nobody.

Early Stage Companies

At the very early stages of your business, you’ll likely be trying to build a Minimum Viable Product (MVP) and working out whether there’s a market for it, and if there is, the size of that market. At this stage, your main IP concerns will be around how best to keep your valuable information confidential, and understanding what IP you have, and how best to protect it. All of this will be constrained by a tight budget.

That doesn’t mean you can’t have an IP strategy, but it does mean picking certain battles, and leaving others for later.

An obvious battle that is absolutely worth fighting, at least if you’re a technology business, is obtaining patent protection for your idea. Even if you’ve only developed the basic concept, a patent attorney can likely convert that into a patent application. Once filed, you can effectively ignore it for another 6 to 9 months. It will take at least this long for the Patent Office to assess your invention and comment on whether it’s ‘patentable’.

Before filing a patent application, perform a ‘novelty search’ to see whether your invention is new. Whilst it doesn’t sound very sexy (‘patent pending subject to a novelty search review…’ said nobody ever), it will give you a good idea of whether it’s worth stumping up the cash for a fully fledged patent application. The novelty search will also give you some insight into whether you’re already in a crowded field, and if you are, whether there are still gaps that you could feasibly address with your product. Remember, for an invention to be patentable, it must be new (amongst other requirements).

A patent attorney in the UK will typically charge somewhere between £6,000 to £10,000 for drafting a patent application. That might not sound too bad in the face of what you believe to be a kazillion-dollar idea. However, a novelty search can be performed by specialist searchers for less than £1,000 and may spare you wasting a further £6,000+ on a pointless patent application. If we assume, for example, that a software engineer has a day rate of £500, then spending £10,000 on a dud patent application is effectively 20 days of coding that could have happened, but didn’t.

Would you rather trade that for some paper...?

Filing a knowingly pointless patent, so that you can bamboozle an investor with a ‘patent pending’ soundbite, might buy you a slither of funding runway. However, you’ll have a much easier time convincing investors of the value of your technology, if you can show that it likely is new, and that you’ve taken informed steps to protect it.

All of the above can be done with the support of a patent attorney and at moderate cost. Touch points may be limited to say, 3 or 4 meetings, stretched over a month or two, giving you enough time to focus on what matters, e.g. building a proof of concept.

Do you need an IP Strategist at this point?

Technically, no, it’s probably a luxury that you can forgo.

However, it may save you some funds in the long run.

At the early stages of a business, it can be tempting to treat all of your ideas as golden eggs, worthy of their own patent applications. A patent attorney is unlikely to tell you otherwise and will happily draft legally and technically beautiful documents that describe each of them. An IP Strategist, on the other hand, is not incentivized by the number of patent applications you file. An IP Strategist can take a step back, look at your business as a whole, and then propose a 'best-bang-for-buck' approach in terms of protecting your IP.

Scaling Up

You've secured additional funding—congratulations! Now comes the fun part: scaling up operations and preparing for launch. This is a crucial phase where an IP strategist's role becomes more pronounced. As your company grows, so does the complexity of your IP needs. You're likely expanding your product line, entering new markets, and catching the eye of competitors.

Your IP Strategy will need beefing up accordingly.

As your product approaches launch, you'll need to take third-party IP infringement risk more seriously. Afterall, there's a chance you'll be making a dent in somebody else's profit margins.

An IP Strategist can help you pinpoint and prioritise areas where third-party IP infringement risk is higher, and help you identify steps or actions to mitigate that risk. As your product portfolio expands, new risks will emerge, all of which will need to be considered. Having survived as a plucky start-up, you might be tempted to YOLO and do nothing about IP infringement risk ("nobody enforces patents anyways, really, do they?"). However, if your product truly is the trail-blazing bit of kit that you believe it is, then expect bumps in the road ahead.

At the very least, the dominant incumbent is unlikely to step aside and let you seize the market. Even if they'd like to acquire your business or your technology, a lack of freedom to operate will damage your (or its) valuation. Also, if you're launching a product for use by other businesses (e.g. selling B2B), they'll want some reassurance that using it isn't going to land them in legal hot water with somebody else.

As you prepare to enter new markets, you'll also need to start thinking about where you'll seek IP protection, and budget for that accordingly. What began as a single patent application, filed in a specific country, may now have spawned into multiple different patent applications, spread across the globe. Where before you had to deal with a single patent firm, there may now be multiple firms vying for your attention, asking for your input on how you'd like to proceed in their corresponding country. An IP Strategist can help coordinate this efficiently.

Established Player (Operational)

You've made it! Your company is now a recognized player in the market. But with success comes new challenges, like managing an ageing IP portfolio and staying ahead of the game. Your IP budget might be substantial—think £250k a year or more—but it's vital to manage it wisely to avoid spiralling costs.

As you navigate new markets or fend off emerging competitors, your IP strategy will need to adapt. This could involve acquiring new IP assets to fill gaps in your portfolio or stimulating the creation of new IP in response to market or technology trends. You might also want to actively challenge your competitor's patents, lest they become a future thorn in your side.

There's also the question of whether, at this stage, to start flexing some IP muscle. It may be that the market has reached sufficient maturity that detecting infringement of your IP is finally feasible (and profitable!). If you think enforcing IP is some kind of mythical exercise that nobody does in real life, then I've got an Apple Watch to sell you, and guess what, it doesn't have blood oxygen detection technology anymore (see: 'Apple Watch ban: everything you need to know' for context).

By now, you will likely have iterated on your product multiple times, or may even have developed an extensive suite of products, with a sizable patent portfolio to boot. Some of those patent assets may no longer be of value, and an IP Strategist can help you identify which of your assets those are, and what to do with them. More generally, as your patent portfolio ages, the cost of maintaining it will increase year on year (in line with renewal fees, which increase with each year of a patent's term). An IP Strategist can help with forecasting future costs and help you identify ways of keeping them below an acceptable level.

An IP Strategist can also support you with commercialising your IP, be that through identifying potential licensees or opportunities for collaboration. That doesn't mean producing a slick slide deck of graphs and promising licensing revenues of approximately a gazillion dollars in 5 years from now. It means taking a deep dive into your patent portfolio, gathering competitor intelligence, and pulling all of those strands together into an actionable plan, with the IP Strategist's neck being firmly placed upon it.

As your company evolves, so does the importance of strategic IP management. An IP strategist doesn't just maintain and leverage existing assets; they play a pivotal role in driving innovation and keeping your company competitive. Whether it's by identifying new market opportunities, mitigating risks, or fine-tuning your IP portfolio, the insights and guidance of an IP strategist are invaluable for sustaining growth and success. This sort of work just isn't the usual remit of a conventional patent attorney.

If you think you need the support of an IP Strategist, get in touch, we'd love to help.