Getting the most out of your IP: Questions from start-ups

POF recently co-hosted the Springboard Enterprises Life Sciences Bootcamp and participated in a roundtable to address IP-related concerns from founders seeking to expand and globalise their enterprises. Some of the common questions that arose during this event related to optimising and prioritising investment in IP, Freedom to Operate and prior art searching.

Optimisation and Prioritisation of IP Spend

We are often asked, “how do we get the most out of our IP budget and prioritise IP expenditure?” More often than not, this question is asked by an COO, BD manager or founder who is simultaneously raising capital, managing investor relations, and overseeing R&D and compliance, all while managing the company’s IP. Understandably, managing IP in this environment becomes reactive; extensions of time become commonplace and decisions to proceed with new filings and renewals are made on an ad hoc and often urgent basis.

An adequate IP budget is critical to managing important IP assets, but budgeting the time to do it effectively is equally important. More effective decisions can be made by scheduling time each month to review your IP strategy in the context of broader commercial objectives, and execute required tasks such as:

  • Reviewing innovation pipeline and evaluating IP opportunities.
  • Updating and reviewing product coverage and IP Register.
  • Competitor surveillance and analysis.
  • Freedom to Operate analysis.
  • Contract management (keeping track of employment/consultant contracts, NDAs, licenses etc).

Regularly checking in on IP issues provides deeper knowledge of threats and opportunities, and supports confident engagement with investors and other stakeholders. Importantly, it also provides for efficient communications with patent attorneys who can then advise and act on instructions more economically.

Prioritising IP resources toward product features and tasks that have the greatest commercial importance is crucial. However, technology roadblocks, market feedback, modified commercial pathways and regulatory issues can force the focus to change. Therefore, adapting IP strategy to best support current commercial goals is important to get the most out of IP budgets.

Freedom to Operate and prior art searches

Freedom to Operate (FTO) and prior art searches are often coupled together in the context of searching, however they are very different beasts.

FTO searching is undertaken to determine commercial risks arising from the existence of third party rights that could be infringed, even if a patent has been granted in respect of the product being commercialised. Because IP rights are administered on a country-by-country basis, a FTO “opinion” can only be supplied by a licensed practitioner in the country of interest. However, conducting preliminary FTO enquiries in-house, or using a local attorney, can provide a level of comfort about the competitive landscape and what IP-related commercial threats may exist. The regularity with which FTO analysis is conducted depends on the stage of development of the product and is often iterative in the early stages. Once product features are settled, FTO analysis should be updated regularly (at least twice yearly).

In contrast, a prior art search is typically conducted before filing a patent application to identify information in the public domain that could invalidate a patent for an invention or prevent a patent from being granted. There are numerous free online patent databases including those administered by WIPO and the EPO, and non-patent literature databases are also accessible over the internet. Subscription databases provide richer and more usefully searchable data and are accessible through private search companies, such as our affiliate IP Organisers, who your patent attorney may instruct on your behalf. As patent applications are not published until 18 months after lodgement, it is important to top up prior art searches until 18 months after the patent application filing date. Thereafter, there is typically no ongoing need for prior art searching.

Getting the most out of your IP can be difficult, and a daunting task in particular to anybody new to the industry. If you have any particular concerns or questions that haven’t been addressed in this article, please contact us to find out how we can help you.

BSc BEng(Biomed)(Hons) GDipIPLaw FIPTA

With a Bachelor of Science and Bachelor of Engineering (Biomedical) from Flinders University of South Australia, Alyssa has a background in electronics, control systems, physiology and anatomy, neuroscience and medical physics. She is also the practice team leader of POF’s Electronics, Physics and IT (EPIT) team and a POF Board member since 2022.