When it comes to patents, if you want something done right… it can pay to outsource

It is an age-old saying that if you want something to be done right, you should do it yourself. However, this is not always the case in the IP world – here, outsourcing certain tasks could be the right answer.

In recent years, the number of start-up companies established has grown at a rate of 1,843.5 per day. Regardless of their size or scope, all start-ups have one thing in common – their desire to maximise growth. Many of these organisations have limited staff and time, with founders and key team members carrying out multiple roles across the business. For many of these companies, it is their new idea or process that they believe will change the world – and this idea is their goldmine. For this reason, it is essential that start-ups protect their intellectual property correctly. However, with so many moving parts in the IP field and the millions of patents in existence, there are many reasons why start-ups should consider outsourcing this taskto experts to improve their return on investment in the future.

Patenting an idea can be expensive. After already investing thousands into the R&D of a product, the overall cost of filing an application can run into the tens of thousands. Factoring in attorney fees, it would be devastating to invest so much capital into an invention only to have it fail due to a lack of due diligence. For this reason, investing early in outsourcing traditional IP tasks could save thousands in the long run.

Know which patents currently exist in a technology area when applying for patent protection

Global innovation intelligence platforms are patent databases that allow companies to easily separate signal from noise. These are a great place to start a freedom to operate (FTO) search to view patent landscapes before taking your product to market. Such searches swiftly reveal if there is pre-existing active patent protection that would negate the application’s claims. By initially searching to see what innovation currently exists in the technology area, you can potentially save millions on R&D costs, lawyer and infringement fees. Discovering this only after investing much time and capital into production, prior to an FTO search, can cripple a business.

That being said, using a patent search database to conduct a thorough FTO search holds its own challenges if a start-up is not well versed in intellectual property. The most important step in performing an FTO search is have an exhaustive search query in order to obtain a set of relevant patent results. This can pose challenges to start-ups without in-house expertise or a budget to hire an internal IP team. Outsourcing this task to IP professionals who will improve the accuracy and relevancy of the results will save headaches (and money) down the line, and  ultimately increase the entity’s availability to work on other matters that are crucial to its success.

But what if a company does not understand why a patent is key in the technology area?

Making sense of patent analysis can be time consuming. Further, not having the expertise to understand the implications of another patent’s claims on your FTO can be devastating. This is why outsourcing these tasks is critical for time-short teams, as manually reviewing patents requires a lot of time and attention to detail. Understanding why patents are key players in the desired tech area, or why jurisdictions have more white space opportunities than others, are just a few pieces of analysis that a patent experc can share. Trying to conduct FTO analysis can be a dangerous game and there is no room for error. Outsourcing the process is highly recommended, as this way, the start-up is taking every precaution to ensure there are no legal consequences to its actions, and securing the chances of success as a business.

What happens if there is no FTO?

Sometimes, regardless of how unique an invention was thought to be, someone else has made it. In this case, it is recommended to talk to the patent holders to get permission or a licence, or even buy the patent to get an FTO. Buying or licensing a patent is a very simple, yet potentially expensive solution, but it could be the only way to continue selling certain products. Depending on the companies who own the patent rights, one option could be to sign a cross-licence agreement. This allows companies to share patent rights, grant permission and use each other's patented technology to potentially discover breakthroughs that would not have otherwise been possible. Another option is to invent around the patent, which would involve altering the innovation just enough to be recognised as a different patent. Doing so will not only mitigate the risks of infringement, but it could also highlight potential whitespace opportunities in the technology area for you to capitalize on.

In short, in a slight to the age old saying, if you want something done right in regards to protecting intellectual property as a start-up, sometimes, you should not do it yourself. In better understanding the key hurdles often blocking start-ups and small businesses when it comes to the IP world, the best strategy to overcome such adversity is to outsource the tough workload to IP professionals. Not only can they provide amazing results and analysis, but also make the company much more financially efficient in the long run.

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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