Rob McInnes, one of Australia's leading patent and technology licensing lawyers gives an overview of IP basics and recent developments aimed at startups.
This was presented in a recent workshop for the INCUBATE startups.
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IP in Start-Ups
Any professional investor will carry out due diligence on
IP
Full IP due diligence on a mature company will be a
six-figure job that takes weeks
Any successful tech company will be subjected to full
IP due diligence whenever an early investor has a
chance to exit
How do we avoid creating issues that will not pass IP
due diligence?
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Ownership/Control Issues
Inventors and employment
distinguishing employees and consultants
student and academic issues
Chain of title
Licence conditions
Funding conditions
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Acquiring IP
In-house development
formal process of IP capture
Licensing in
issues of royalty base, restrictions on field, rights of use,
background IP
Collaborations
issues of IP ownership, licence rights (beware joint IP)
Purchase/M&A
need to do your own due diligence
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Beware Patent Puffery
No “worldwide” patent
An application will almost never be granted in the form
applied for
A granted patent may not be valid or enforceable
Different national principles apply
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Best Practice IP
Management
Dealing with staff and contractors
Dealing with research collaborators
Dealing with suppliers & customers
Planning and conducting R&D with IP issues in mind
Understanding the IP landscape
Building and maintaining the IP portfolio