LES Leading Edge Series Speaker Interviews: Prasad
Tuesday, May 7, 2019
LES: You will be moderating the panel titled "IP Management for Startups." In a few short sentences, what can attendees expect to learn?
Prasad: IP is critical to startups, as it is one of the few assets that a startup will have. Yet, obtaining patent protection can be expensive for a startup, particularly early on when funds are scarce, and the cost of capital is very high. I expect that attendees will hear answers to questions such as "What are various strategies that startups can use to protect their IP?" "What are the consequences of not obtaining early protection on the key IP?" "How is IP viewed by venture capitalists and angel investors?" The discussion will benefit from the panelists' broad range of expertise.
- Sanjay Prasad, Prasad IP, PC
- Jeff Bartholomew, Attorney, Robinson Waters & O'Dorisio
- Katharine Ku, Chief Licensing Advisor, Wilson Sonsini, Goodrich & Rosati
- Nola Masterson, Managing Director, Science Futures, Inc.
- Soody Tronson, Founding Managing Counsel, STLG Intellectual Property Law Firm; Founder & CEO, Presque
- Larry Udell, Founder/Chairman, Silicon Valley Chapter, LES
LES: Technologists and IP professionals face many challenges and opportunities today. What one challenge do you hear about the most? What one opportunity?
Prasad: Certainly a major challenge is prioritizing what needs to be done -- best practices for a startup for generating and managing its intellectual property, and carefully prioritizing it all because, of course, funds can be scarce in a startup. Often we get the question "What are the consequences of not doing it early and not doing it right?" Or if they have limited funds, understanding what a startup's principals should do first, given that patent protection requires expenditures. Or, they may ask "What are the different options for paying for the work early on?" If they're inexperienced, the number-one question generally is, "What should I do about IP protection?" If they're experienced, the question generally is around funding it.
The opportunity comes if you do it right: there is a tremendous amount of value to the business with respect to attracting capital, attracting talent and marketing the business, and also just in the ease that it gives you in interacting with others, because once you have the patent application, it is easier to talk to people. Otherwise you're always worried about people taking your IP. I do nondisclosure agreements and such regularly, and having the patent application done just makes it a lot easier.
LES: Can you give me an example of what startups typically look to manage with respect to IP? Is it their business process idea?
Prasad: Well, it will vary depending on the industry, but it will be their technology. Whatever technology they've developed, how do they protect that? Then it will be the business name, and the product name or the slogans, filing for trademark protection for those. Then there is the confidential information, the " secret sauce" type of material, which is their trade secrets.
LES: What are you most looking forward to at the event? You've got all these great panelists. What do they bring to the table?
Prasad: I'm expecting a really good discussion around best practices for IP in startups. We have a diverse set of panelists, with two people who work regularly in venture capital -- working with startups, helping them with funding, and the early stages of advising them. We have a patent attorney who works a lot in the tech industry (as do I), and a general corporate lawyer, who brings the corporate law experience. We have an expert who has spent her career doing technology licensing, how companies actually transfer their technology in and out. One venture capitalist works a lot in the life sciences, the other is very active in LES in Silicon Valley. You couldn't have a better set of experts.
Click here to register and learn more about the LES Leading Edge Series May 14 event at the Silicon Valley USPTO.