Building a Patent Department at a Tech

StartupEconique IP Strategy Dialogue, Berlin, September

2014

Dominic Davies - EPA & CPAIP Team Lead

FlatFrog Laboratories AB

FlatFrog Laboratories AB

- I joined in 2013- Patent team of just 2 people- Very intense 18 months- FlatFrog has a bright future- All the more pressure on the patents team!

Where to start?● Step 1 - Learning

o Historyo Audito Peopleo Threats

● Step 2 - Planningo To do listo Budgeting

● Step 3 - Doingo Peopleo Softwareo Processes

History- Understand the motivation for the

filing of each of the patents so far - What did the business need at the time

and is the need the same today?- Existing patents blocking the business

roadmap?- Existing agreements/licenses?- Skeletons in the closet are common so

dig for them!

Audit of existing patents/applications- Current status- Standard countries (are they all covered?)- Audit of rights ownerships- Transfers correctly executed- Inventorship- Check IP clauses in employment contracts

transferring IP to business- Renewals of granted patents- Some will be urgent. Prioritise and hand off to

outside counsel - you will be too busy

Knowledge Map

Patents- Interrelationship/Groupings- Priority/Importance- Relation to products- TaggingProducts- Release date- Freedom to Operate

Outside Counsel - 1- Who are they?- History of their relationship- Value for money/right person

for the job?

Outside Counsel - 2- Meet them- Clearly establish billing rules

and processes- Properly managed

relationship leads to good results

- Keep former outside counsel on good terms - probably will be needed again soon

Understand the existing threats- Landscaping- Monitoring- Software tools or professional services- Depends on complexity and breadth of

technical area- As soon as something comes up, report

to business and begin threat assessment process

Department Construction ‘To-Do’ List

- List of business goals for patent team- List of all the tasks to complete to

meet those goals- List of all the department structure and

processes needed to complete those tasks

- You may have been hired to reduce costs

- Read and understand previous year’s budget

- Understand what kind of spend reporting they need

- Training in existing budgeting tools- Costs timeline spreadsheet- Surprisingly straightforward

Budgeting

InventorsRelationships- Meet all of the inventors Who are the ‘stars’?- Every small or medium company has its star

inventors- Usually pretty familiar with patents already- A good relationship with these people can make

your life 1000x easierTraining- Basics of patents / advanced

Management

- Educate on what services a patent department can offer to the business

- Determine what is needed from the business - Highlight your successes- Clearly presented facts should be prepared for

presenting problems and requesting decisions- If a question comes up often, do a ‘fact sheet’ on

the subject- Educate!

The Board- Members are usually highly experienced- Often have a reasonable (if incomplete)

model of how patents work- Limited time to explain things to them- You will be asked to justify your

decisions- They will think of opportunities/risks

you had not- You need to be ready to counter bad

ideas on the spot - Explain risks and unknowns clearly- Be prepared!- If your planning and preparation is

solid, do not get blown off course by strong personalities

Software Solutions

- Excel spreadsheets - Bad idea. Will not meet the ‘due care’ requirement for reinstatement

- Simple solutions- Establish what you need

- Administrative support- Filing system- Intelligence- Complexity- Price- Review a number of solutions before making a

decision

Processes- Processes for

project based patent work

- Staged application review board

- Letter, document templates

- EPO online, E-PCT, USPTO private access

- Authorisations- Many more

Mistakes to avoid

- Assumptions - Mis-Prioritisation - Not tracking risk in a clear way- Not communicating your successes- Not having fun!

Questions