At the outset it is important to identify critical IP assets and to not disclose these before you have taken professional advice. This is especially true of any assets that you might want to protect with patents, utility models and Registered Designs. Disclosing an idea, unless under strict confidentiality (and even that can be risky), will likely render an invention un-patentable or a design feature un-registrable (grace periods may be available to put the horse back in the stable but this should be considered only as a last resort). Ensure that the company owns the IP or at least has the right to use it by way of a licensing agreement.
Find an expert and invest time in getting to know them. You want to have a long-term relationship – educating a new adviser in your business and technology can be painful - and it is important to get it right from the outset. You will be making some very key decisions and whilst you can change advisers later, the damage may have been done by then. Keep in mind that your most valuable IP assets may well be those that are generated at a very early stage, or which you bring with you into the company, so a change of adviser at a later stage may well be a matter of damage mitigation.
Take advice from those that are further along the road, and educate yourself. Obtain a reference for a trusted adviser. Look for a team that can support you across multiple technologies, jurisdictions and IP asset categories. Be wary of the individual expert that claims to do it all, but on the other hand value an adviser that can take a holistic view. Look for resilience in your advisers. Do they have a team that can provide succession, for example if a key contact moves on? What about financial strength; not yours but theirs? Are they going to pressure you when your funds are limited or your cash flow is tight because they are not financially resilient, even though you are good for the money?
It can be extremely valuable to look at the level of activity in your field and the aggressiveness with which your (potential) competitors enforce those rights; registers of IP rights including patents, designs and trade marks are readily available online. For example, little activity in these areas might suggest that registered rights are not considered to be of high value in your area although, on the other hand, that might open up an opportunity for you to create a more extensive monopoly. Looking at the portfolios of successful competitors can give valuable pointers on the geographic extent across which you should seek to register your rights.
Whilst trade marks and design rights may be important further down the road, for a tech start-up they are unlikely to be critical at the outset. But do consider these before committing to a design or brand and preferably before you become emotionally attached to either. Brand strategy will be especially important to a company whose products or processes will be customer-facing and not just part of a larger solution which a party further down the line will be selling in reliance on their own brand profile. It is definitely recommended to conduct a trade mark clearance search at an early stage, even a relatively lightweight one, and before you invest any significant resources in branding, to identify potentially problematic third party trade mark rights and help steer a path around these. It is certainly preferable to identify any potential branding issues early when it is cheaper to rebrand, than later when it may be costly to rebrand stock and re-educate consumers.
Make sure you know what you are in for financially. Obtain cost estimates that are aligned with your objectives and set up a process to manage costs based on these estimates. And beware of mission creep that will escalate costs.
Assuming that the start-up is not just you, allocate the internal IP role to someone who has the time and interest to handle it. All too often this role is given as an afterthought, to someone who is already busy with their day job and whose first objective is to offload the role to the next “volunteer”. It is important to maintain documents and good records from the outset. A simple spreadsheet might be sufficient for the latter but as time progresses and the portfolio grows a more sophisticated system might be appropriate.
Finally, set up the processes that are required to follow your strategy and achieve your objectives.
