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Next steps: tips for start-ups and early-stage ventures
In our previous article, we discussed IP first steps for start-ups and early-stage ventures, especially those that may be encouraged by the current national and international drive for new and improved critical minerals mining and processing technologies. Here, we walk you through some of the key considerations and pitfalls when starting your commercialisation journey.
Ready to file a provisional application?
Now that you have worked with a patent attorney who specialises in your subject matter area, and have identified a potentially patentable idea, what happens next? As mentioned in our previous article, the first step to protecting your idea is to secure a priority date. This is most commonly achieved in Australia by filing a provisional application.
A strong provisional application should capture the likely commercial product and any credible alternatives. The disclosure in the provisional ideally needs to be complete enough to support meaningful claims now, while providing the detail and breadth to enable narrower, or different, claims later.
Even with only preliminary results, you can include predicted outcomes supported by well-reasoned protocolsas prophetic examples:
- Make them clearly identifiable
- tie predictions to underlying mechanisms, and
- anchor them with expanded ranges and controls.
See our previous article for more information on prophetic examples.
As real data arrives to support (or disprove) those predictions, the disclosure of the initial provisional application can be adjusted before filing as a complete or PCT application, or to support divisional or continuation applications (depending on the timing of the additional data).
As an added advantage, provisional applications are only published if they provide priority for a later complete or PCT application, meaning that if your idea does not live up to expectations, it can be withdrawn and never published.
Freedom to operate starts earlier than you think
As important as it is to plant your intellectual property rights flag, it is just as vital to be aware of the field-of-play prior to entering a new market. This is because patents are a negative right - they only define what a competitor cannot do, rather than what youcan do. As your ideal commercial embodiment may infringe the patent rights of others, early consideration of your freedom to operate (FTO) in the area is a necessity before commercialisation begins to ensure you're not infringing the patents of a third party.
For materials and processing start-ups, we recommend:
- carrying out a search of active Australian patents and pending applications in your field of interest
- flag any third-party patents that read onto your intended product/process, and
- decide early whether to license, design around, or pivot the product or process.
A targeted FTO analysis at the provisional stage allows early decision-making before significant expenses have been committed.
FTO searching and analysis should be conducted by a Qualified Patent Information Professional (QPIP) who can ensure rigorous and targeted searching of your subject matter to provide confidence in your commercialisation journey. Our dedicated QPIP is highly experienced and ready to assist.
Common pitfalls (and how to avoid them)
The following key points are important to keep in mind to ensure that you are up and running on your commercialisation journey (and avoiding any significant stumbles!).
- Early disclosures: file early provisional applications and avoid publications related to an invention before filing.
- Under-disclosing the preferred route: keep a short internal checklist of anything vital to the working of the invention to ensure they are disclosed in the application at filing.
- Waiting for perfect data: file early with sound rationale and initial results and draft broad claims with narrower embodiments disclosed in the specification = narrow the claims to the working embodiments when further evidence arises.
- Leaving FTO too late: have a patent attorney search for conflicting, active patents in Australia before entering into a new space to avoid costly redesigns.
How we can help
If you need guidance along the commercialisation pathway, whether you are just starting out or ready to file, we can help you to understand the requirements, review your invention to determine patentability, and help you to build a strong intellectual property portfolio.
Our chemical and engineering teams across Australia and the Asia Pacific are highly experienced and have expertise covering a wide range of technical areas. We would be more than happy to put you in contact with the attorney that best suits your technical area.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
