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"IP Strategy Basics for Your Startup"
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Patrea L. Pabst, J.D.
Pabst Partner Group
Platform versus product technology is frequently referenced in discussions about forming a company. A "platform" technology refers to technology that can lead to a pipeline of multiple products, where further research may lead to embodiments still covered by the platform ip, but which can in turn be targeted to different markets, each with a separate valuation and likelihood of success. It is hard to convince investors that a single product can produce sufficient return to justify the high cost/high risk of failure associated with a single product, no matter how attractive the product. Most product technology is usually licensed or partnered at a later stage of development than platform technology, and in turn is lower risk than early-stage platform technology. Since valuation is a function of both market size and likelihood of success, product technology can have a high valuation, depending on the status of the research and development, the market cap, and probability of success. However, many investors want platform technology to ensure options as development proceeds and new opportunities are presented. In this case flexibility is crucial when the initial business plan changes due to development problems, change in the market due to decreased need or better alternatives, or change in investor focus. Drafting patent applications which "tell a story" can increase the likelihood of licensing or investment, as well as facilitating prosecution. In the vernacular, "what is it and who cares." Focus on the problem to be solved and what your solution is. When filing patent applications, it is important to file early and broadly. It is critical to provide an enabling disclosure for embodiments that will actually reach the clinic or marketplace. Examples and explicit basis to support the claims defining the scope of the invention(s) are particularly important if the patents are filed in countries such as China and India, as well as the European patent office. Failing to file outside of the US can significantly reduce valuation due to the inability to preclude competition outside of the US. However, filings should be made strategically to avoid being overwhelmed with the cost of foreign filing, prosecution, and maintenance, which is much higher than in the US. A broadly filed application can easily reach $250,000 in costs, so it is essential that one file fewer applications which cover more technology, and only in countries where there is likely to be major players in manufacturing or distribution.
About the Speaker
For more than three decades, Patrea Pabst has provided comprehensive intellectual property counsel to pacesetters in the biotechnology, medical, pharmaceutical and chemical fields. Patrea brings a critical business perspective to her legal advice on a wide array of patent matters. She advises corporations, universities, and investors in startup and early-stage initiatives on some of today’s most cutting-edge technologies. Clients rely on Patrea to evaluate their technology with an eye to patentability and valuation, prosecute patents before the U.S. Patent and Trademark Office (USPTO), and coordinate corresponding international filings. She provides strategic planning for her clients’ immediate and long-term goals, reviews licensing agreements, and renders legal opinions. Patrea is also a formidable advocate for her clients in administrative proceedings, including reexaminations, interference proceedings in the U.S., and opposition proceedings before patent offices in jurisdictions around the world. She identifies the market potential of clients’ discoveries, then designs practical, business-oriented solutions to achieve their strategic goals. Committed to excellence in all areas of her practice, Patrea balances her clients’ commercial objectives with their budgetary requirements to support their bottom line. Many of Patrea’s clients have chosen to remain with her for decades, a testament to her dependability, productivity, and value.
The Best Lawyers in America 2010-2019
Martindale-Hubbell AV Preeminent Rating
- Workflow Status: Published
- Created By: Colly Mitchell
- Created: 08/26/2021
- Modified By: Colly Mitchell
- Modified: 09/27/2021