IP Strategy for Deep Tech Founders · Part 1 of 3

What a patent is actually for in a deep-tech company

Founders file for reasons they rarely state out loud. Naming the reason first is what makes the rest of the strategy decidable.

12 months

from a provisional to the non-provisional deadline

First to file

the rule in the United States since 2013

Three different assets wearing one name

A patent can be an exclusion right you intend to enforce, a defensive position that makes you an expensive target, or an asset that reads well to an acquirer or an investor. Those are not the same document and they are not filed the same way.

The claims that make a portfolio look substantial in a data room are often broader and vaguer than the claims that survive a fight. The claims that survive a fight are narrow, specific, and unglamorous. Choosing between them is a business decision, and it belongs to the founder, not to the drafter.

Say which one before the first draft

The cheapest moment to decide is before anything is written, because everything downstream, how much searching is worth doing, how much specification detail to commit, how many continuations to plan, follows from the answer.

The most expensive version is deciding after allowance, when the claims you have are the claims you get.

Key insight

A patent strategy that cannot name which of the three assets it is buying is not a strategy, it is a filing habit.

What to do next

  1. 01Write one sentence naming what each planned filing is for.
  2. 02Have the person who will pitch the portfolio read that sentence.
  3. 03Revisit it at each funding event, not at each filing.

Daniel Gould

General Partner, Castle Fund

Invests in deep-tech companies at seed and Series A, and has sat on both sides of the diligence table when a portfolio is the asset being bought.

ZeroToIP

Editorial

ZeroToIP builds one record that runs from a founder's first description of an invention to counsel's filing. This series is general information, not legal advice.