Patents for startups and university spin-outs

What I help with

• First filingsWhat to file first, when, and how to spend a limited budget where it matters most.
• University licensesUnderstanding and negotiating the patent terms of a license from a university or research institute.
• Ownership clean-upAssignments from founders, employees, contractors and collaborators, including work done before the company existed.
• Building a portfolioA filing plan that follows your product roadmap and financing timeline.
• Diligence readinessPreparing for the IP questions investors ask. See What investors ask about your patents.

Common mistakes

1. Unassigned founder inventions

   Inventions made before incorporation, or by founders still at a university, may not belong to the company until they are assigned in writing.

2. Publishing on an academic schedule

   Papers and talks can come before the patent filing. Building patent review into the publication calendar avoids losing rights abroad.

3. Spending the budget too early

   Filing broadly in many countries before the technology settles can use up money that is better spent later. Provisional and international applications can delay the largest costs.

4. Overlooking federal funding rules

   Inventions from federally funded research come with government rights and reporting obligations that investors will check.

A first-year IP plan for a spin-out

1. Confirm ownership

   Get assignments from every founder and contributor, and a license or option from the university for anything made in its labs.

2. File a focused provisional

   Cover the core invention before publications, conference talks and investor pitches.

3. Build the record

   Set up a simple invention disclosure process, keep lab notebooks, and keep a list of public disclosures.

4. Convert with a plan

   Within 12 months, decide on nonprovisional and international (PCT) filings based on new data, funding and target markets.

5. Prepare for diligence

   Keep a short IP summary and clean records ready for investors.

How I work

I start with your technology and your financing plan, then build a filing strategy that fits both. See how I work.

Representative experience

Matters are described in general terms to protect client confidentiality.

• Participated in licensing negotiations between a major research university and a multinational corporation
• Advised a biotechnology startup in licensing negotiations with a global life sciences and diagnostics company
• Advised a research university on deconflicting sponsored-research agreements
• Patent prosecution counsel for research universities’ licensed portfolios in quantum computing and silicon photonics

Questions

What does a university license usually cover?

Typically the patents licensed, whether the license is exclusive, the field of use and territory, royalties and sometimes equity, sublicensing rights, and reimbursement of the university’s patent costs.

How many patents do we need before raising money?

There is no fixed number. Investors care more about whether the company owns its core technology and whether the filings cover the product than about the count.

Can founders keep publishing after we file?

Yes. Once an application is filed, publishing the work described in it does not affect that filing, though new results may need a new application.

Should we file before talking to investors?

Usually, for core technology. Most investors will not sign confidentiality agreements, so treat anything shown in a pitch as potentially public. A provisional application filed before the meetings secures the date.

Can a startup pay reduced USPTO fees?

Yes. Small entities, generally companies with fewer than 500 employees that have not licensed the invention to a large company, pay reduced fees, and micro entities pay less still. Check eligibility before each payment.

What happens to the patents if the startup closes?

Patents are company assets. Depending on the license terms, they may be sold, licensed or returned to the university. A clean ownership record makes them easier to sell and can recover some value for investors.