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Getting your patent portfolio ready for early stage investment
Chris Baxter
Chris Baxter

During commercialisation, inventors, start-ups and the like often seek investment by leveraging off their intellectual property. However, whereas investment funding is often required during the early stage commercialisation, the granting of patent rights mainly happened a few years down the track, the conundrum being that investors often times don’t invest until they are satisfied as to enforceable patent protection rights.

Investors often times don’t invest until they are satisfied as to enforceable patent protection rights

This blog analyses how to leverage off the early stage opinion of the International-type search to unlock early stage investment funding..

The patent application process

The patent application process is protracted and the examination and grant of a patent may happen several years from the application date. However, this isn’t necessarily a bad thing as it is often advantageous to keep a patent pending so as to leave scope for amending the claimed invention in light of new commercial opportunities and competitor activities.

However, start-ups can’t wait several years for funding and often times have to represent mere patent pending to investors when seeking investment funding, often times having to forego more equity as opposed having had granted patent rights.

Leveraging off the International-type Search

Luckily, during the patent application process, there is opportunity to gain an early stage “sneak peek” as to novelty by way of the International-type search. The International-type search is a search done by the International searching authority which comprises a thorough searching of the prior art, and the provision of an opinion as to the novelty and inventive step of each claim of the patent application. This opinion is not binding but it is persuasive on the examiners who will eventually examine the patent application down the track.

As such, patent applicants can use the International-type search to their advantage to encourage investors as to their eventual likely scope of patent protection.

Getting a clear opinion

The process is to start off with the filing of a provisional patent application to establish an international filing date for the invention. Then, shortly after having filed the provisional patent application, request the International-type search on the basis of the claimed invention of the patent application. The International-type search takes about six weeks to complete.

With this opinion in hand, the applicant can immediately see which claims of the application have been deemed to be novel and involve and inventive step. With this information in hand, applicants can represent to investors with a high degree of certainty as to the eventual scope of enforceable patent protection. A positive opinion almost certainly unlocks greater investment funding.

Even in the case where the opinion is negative as to the novelty and inventive step of the invention, patent applicants, by still being within the provisional period yet have the opportunity of amending the patent specification so as to address the prior art references and amend the claims to distinguish the claims in at least one respect. Thereafter, the patent applicant need only submit a PCT patent application claiming priority from the provisional patent application. In this manner, the examiner at the PCT stage will see that the International-type search has already been performed and that the prior art references have been addressed by way of discussion in the background section of the patent specification and claim amendment.

The advantage for the patent applicant therefore is having a clear written opinion representing the likely scope of essential patent protection while still having international scope for patent protection.

If you have any questions about this blog article or a start-up looking to leverage off your intellectual property to unlock investment funding, please send me an email or give me a ring so that I can explore avenues for maximising your investment potential.

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About the author
Chris Baxter
Managing Director, Patent & Trade Mark Attorney
Chris Baxter is a Sydney patent and trade mark attorney specialising in software patents, computer patents, medical device patents and engineering patents.

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