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Patenting strategy for early-stage companies

Long before the drug, diagnostic or product is perfected, the patent application is filed. The application must be forward-thinking, describing not only limited embodiments of an invention, but also the scope of the invention. The application and subject matter it discloses will have a life of 20 or more years. The application will be critically reviewed many times during those years. It will be reviewed and assessed by patent offices in various jurisdictions, it will be reviewed during due diligence for fundraising and assessing the value of a company’s technology, and it will be reviewed by potential competitors, and potential licensees. A patent application, when filed, becomes an asset of the company. Hence, for companies seeking to raise funds and to develop a product or method, a coherent patenting strategy is essential. This includes well-drafted and comprehensive patent applications.

A patent provides a right to exclude others from practicing what is claimed. The scope of that right and extent of that right is described by the patent application and defined by the claims. The first patent application filed by a company often defines the company’s platform technology. It can be the only opportunity to claim the most broad embodiments because non-confidential disclosures and uses of the technology, and ultimately the application, are prior art to future applications.

Thus, the first patent applications that are drafted and filed must be drafted with care. They should be drafted by experienced and well-trained patent practitioners who will work closely with the company to understand the technology, and, to identify and understand the prior art in order to define and carve out the right of exclusivity that will be described and claimed in the patent application.

Companies are faced with a dilemma: Their funds are limited at the time when they are needed to create an asset that will attract funding. Because funds are limited, a company often will not seek experienced counsel or any counsel at all.

Companies should be aware that many law firms, including McKenna Long & Aldridge LLP, whose intellectual proper practices focus on early stage and emerging companies, understand this dilemma. For many patent practitioners, working with company founders and entrepreneurs is very rewarding. Each patent application is important to the company; an issued first patent is celebrated. With proper assurances from the company, law firms with expertise in representing such companies will offer reduced rates, payment plans and other options for initial patent applications in order to work with a company from its founding for such rewards and for developing a long-term relationship.

-Submitted by Stephanie Seidman, McKenna Long & Aldridge LLP.

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