Launch Tennessee holds workshop on IP protection for mentor networks
By Tom Ballard, Chief Alliance Officer, PYA
Launch Tennessee hosted the first in what is expected to be a series of virtual events focused on topics of importance to start-ups participating in one of its four sector specific mentor programs.
The inaugural topic in Wednesday afternoon’s discussion was intellectual property (IP) protection. Moderated by Mahni Ghorashi, Launch Tennessee’s Director of Strategy, the 90-minute session featured four panelists with varying backgrounds:
- Vance VanDrake, a Cincinnati-based Patent Attorney and the author of The Patent Game, an Amazon bestseller;
- Platt Boyd, Founder and Chief Executive Officer of Branch Technology in Chattanooga;
- Maha Krishnamurthy, Vice President of the University of Tennessee Research Foundation; and
- Jim Stefansic, a former Launch Tennessee staffer who is now Director of Corporate Development at Cumberland Emerging Technologies (CET) in Nashville.
Each brought a different perspective to the discussion – Krishnamurthy was about protecting and licensing IP, Boyd focused on being a creator of revolutionary 3D printing technology, VanDrake on helping on patenting, and Stefansic offering perspectives as an inventor and now a person looking for breakthrough technologies that CET can license.
They came together to discuss IP protection for individuals involved in one of the Launch Tennessee mentor programs that are collectively focused on one of four sectors that are key contributors to the Volunteer State’s economy – agricultural, automotive, advanced energy, and life science.
As any reader might imagine, the discussion was somewhat technical, but attendees and yours truly walked away capturing a number of key points.
VanDrake (pictured here in a screenshot from the session) noted the dual importance of not only protecting your own inventions but also avoiding infringing on another party’s patents. Later in the discussion, Boyd put a face on how important the latter is with something he experienced recently as Branch Technology was raising its Series B round.
“It (having patents) has been vitally important,” he said in terms of the company’s initial fundraising efforts, noting the number of times he was asked, “Do you have defensible IP?” What Boyd had not expected was a question asked as Branch Technology was raising its Series B recently: “What is your freedom to operate?”
During the discussion, Krishnamurthy noted that “not all patents are the same. Do you go after utility ones or (those focused on) methods?” Provisional patents were also discussed on several occasions as were trade secrets (i.e., the way that Coca Cola is made).
VanDrake cited a relatively new option from the U.S. Patent and Trademark Office that allows firms to accelerate the review process for patent applications by as much as 16 to 20 months for $1,000 to $2,000.
“Work with a firm whose focus is IP,” Boyd (pictured here) advised, emphasizing the importance of choosing the right firm. He also advised those who viewed the Zoom-delivered session to consider doing a lot of the technical writing and drawings needed to help IP attorneys and relying on the latter to write the claims from that information. “It will hold down the costs,” he said.
Here a couple of other insights from VanDrake that we found useful.
- As you are working to raise money from investors, he advised the attendees to “establish a beach head strategy . . . sometimes patent pending checks that box.”
- “You don’t have to ever build what you got a patent for,” VanDrake noted.
- As the session was wrapping-up, the change from first to invent to first to file was discussed. Boyd said, “I love the known-ness of the first to file. For us, it is a comfort. VanDrake described the change this way: “The first provisional plants the flag.”
