Prof. Dr.-Ing. Thomas Sporer is a distinguished expert in the fields of computer science and electrical engineering. He obtained a master’s degree in computer science from Friedrich-Alexander-University (FAU) Erlangen-Nürnberg in 1988, followed by a Ph.D. in Electrical Engineering from the same university in 1997. Prof. Sporer’s remarkable career journey has spanned several academic institutions, including his role as a professor for over a decade at the Berlin University of the Arts.
Currently, he holds a prominent role at Fraunhofer Institute for Digital Media Technology IDMT, where he has been the Deputy Director of the institute since 2004. Notably, his exceptional contributions to applied research were acknowledged with the Thüringian Research Award in 2003 in the Applied Research Category, together with our CEO, Karlheinz Brandenburg.
Professor Sporer’s expertise extends far beyond theory, as he has personally secured patents in various domains of his work and advised many fellow researchers and students on the topic.
On behalf of Brandenburg Labs and our community, we extend our gratitude to him for dedicating his time to this interview. His insights into patent strategies, intellectual property protection, and monetization will be of immense value to the startup community, and we are delighted to share his expertise with our audience.
Question: Why is it crucial for research-based tech startups to have a well-defined intellectual property strategy?
Prof. Sporer: A well-defined intellectual property strategy is crucial for research-based tech startups for several reasons. It involves safeguarding innovations through patents, which serve a dual purpose. Firstly, patents grant you the exclusive right to your technology, preventing others from using it without your permission. In the event of infringement, the legal system can enforce your rights, helping you protect your inventions and monetize them.
Secondly, having patents is a defensive move, especially when others hold patents in the same field. If you’ve patented your technology, it establishes your prior claim, allowing you to negotiate or challenge others who might seek to impede your work. This strategy is vital for startups, as it helps in securing funding from investors who often consider the significance and number of patents when evaluating a company’s competence.
The third dimension to consider, especially for smaller companies, is that patents can serve as proof of excellence, attracting investors and validating your capabilities. The more patents you hold, the more appealing your startup becomes to potential investors.
Question: How can research-based startups identify and prioritize which innovations are most suitable for patent protection, considering factors like market potential, competitive landscape, and long-term business goals?
Prof. Sporer: The general rule is to file a patent when you’ve invented something with a potential customer base. If the market is substantial and there’s limited room for alternative solutions, it’s a strong indication that patent protection is warranted. Additionally, if your invention is significant enough that you can detect duplication or unauthorized use, it’s worth pursuing a patent. However, if the innovation is deeply embedded in the product and challenging to detect, patenting might not be the best option.
Another significant factor in deciding whether to apply for a patent is the size of the market. When the market is significant, it becomes more justifiable to invest in patent protection. For research-based startups, it’s essential to evaluate the cost associated with patent protection. Thus, consider your business model and how patents fit into it. If your business relies heavily on contracting and adapting your inventions, the patent might only be one element of your overall strategy.
Additionally, the most successful and valuable patents typically cover solutions that are groundbreaking and go beyond standard engineering practices. Therefore, patents should address problems in a way that’s unexpected and remarkable, challenging the norm.
Question: In the fast-paced world of technology, startups may pivot or shift their focus over time. How can startups reassess and adjust their patent strategies to align with evolving business directions without compromising existing intellectual property assets?
Prof. Sporer: In the dynamic tech landscape, startups must be agile in adapting their patent strategies to match shifting business directions without jeopardizing their existing intellectual property assets. One thing that helps in this case is to stay informed about what others in your industry are doing. Utilize databases to gain insights into your competitors’ patent filings and thoroughly analyze their patents to comprehend their approach. By examining the patent claims and descriptions, you can identify their patented solutions and the gaps in the prior art they aim to address.
Moreover, startups should focus on the value of patent claims. A patent’s worth increases if its primary claim is concise. A shorter claim with fewer specific features provides broader protection, like a large umbrella shielding your invention. This is advantageous because even if some aspects of the innovation are challenged or invalidated, the core protection remains.
Many experts in the field recommend that a strong invention should have at least two or three independent patents. This redundancy is a proactive strategy to protect against potential challenges or evolving market dynamics. When multiple patents cover different aspects of the same innovation, you have a more resilient protection strategy.
Therefore, as your startup evolves and pivots, continually reassess your patent portfolio to ensure alignment with your new business direction. If you need to adjust or expand your patent strategy due to a shift in focus, work with patent attorneys to assess which patents to maintain, amend, or lay down. An alternative to just lay down can be to sell patents which are not used anymore. However selling patents need careful investigation whether the patent is really not in use: a seller might use the purchased patent against you!
Question: Collaborations and partnerships are common in the research community. What measures should startups take to ensure their intellectual property rights are respected and preserved when collaborating with external parties?
Prof. Sporer: Depending on the nature of the collaboration, startups can consider a few options. For open environments, such as conferences, it’s often impractical to use Non-Disclosure Agreements (NDAs). In such cases, a provisional patent application can be a valuable tool for establishing a date of invention. On the other hand, when collaborating with universities or individual companies, NDAs can serve as an effective means to protect intellectual property.
Collaborating with universities can be difficult due to their often open and collaborative nature. Even if an individual signs an NDA, shared office spaces or servers can inadvertently expose confidential information. Thus, startups should be cautious and, if possible, specify in their agreements that only employees directly involved in the project should have access to sensitive information.
When preparing to publish scientific papers or present at conferences, it’s vital to take the potential implications for intellectual property into account. Startups should be proactive by filing provisional patents before disclosing their inventions in papers or at conferences. This secures the priority date of the invention and ensures that their intellectual property rights are preserved.
Additionally, when transmitting documents electronically, using encryption and digital signatures is important to protect the integrity and confidentiality of the information. To safeguard sensitive information from third parties, consider using multiple communication channels to share passwords or access codes. This adds an extra layer of security.
Question: Startups often operate on limited budgets and resources. What cost-effective approaches or alternative IP protection methods can startups consider alongside traditional patenting?
Prof. Sporer: An economical approach is to begin with filing German patents (for German-based startups especially) as your primary application, because German patents are known for their cost-effectiveness compared to other countries. The application can be drafted in German, however, if you prefer to use English, it’s also possible to write your patent application in English in Germany. The German patent office typically replies within 9 months with the first examination report. After filing for German patents, you have the option to extend your IP protection to an international level through a Patent Cooperation Treaty (PCT) application within 12 months. The PCT is an international application that allows you to select the specific countries or regions where you want to pursue patent protection. This allows you to measure the potential value of your invention without committing to the cost of multiple national applications upfront in terms of translation fees and the like.
Since the German patent office is known for its efficiency in processing patent applications and providing quick initial examination reports, based on this report, you can make a strategic decision about whether to proceed with the PCT application or directly file in individual countries.
Question: As startups attract investment and venture into the commercialization phase, how can they strategically leverage their patent portfolio to enhance their valuation and attract potential investors or acquirers?
Prof. Sporer: Firstly, in your investor presentations and documents, such as a one-pager or two-pager, explicitly mention your patents by highlighting the number of patents you hold and the number of pending applications. For investors with a financial background, a brief mention of the patent’s existence and quantity can be sufficient as they may not require detailed patent descriptions. However, for investors with a technological background, it may be beneficial to include more in-depth content such as the specific patent respectively application numbers, why each patent is important for your technology/ business, and so on. Such information allows interested investors to look up the patents for further details and adds depth to your pitch helping convey the strategic value of your patents.
Secondly, Startups must ensure that the information about the patent portfolio is presented in clear and accessible language. Avoiding jargon and technical terms which may be unfamiliar to non-technical investors helps to communicate the value of your patents effectively. This makes it more understandable to a broad audience, including those not versed in engineering or technology.
Question: What are the challenges and opportunities regarding international patent protection, and how can startups effectively navigate the complexities of filing and managing patents in multiple jurisdictions?
Prof. Sporer: Navigating the complexities of international patent protection can be challenging. The most common and effective way to manage international patent protection is by enlisting the services of an external patent attorney. These professionals often have partnerships with law firms or attorneys in various jurisdictions. When responding to examination reports or filing in different countries, these partner offices ensure that your patents comply with local regulations and standards.
Moreover, your engineers can also contribute to the process. They can draft initial descriptions and technical details, saving time and money that might otherwise be spent on attorney fees. Engineers can provide straightforward descriptions, and patent attorneys can translate them into legal language making it an efficient collaboration that streamlines the patent drafting process.
One very helpful tip in this regard is to follow up the process with a phone call to clarify any points. Because phone calls are a lot quicker and more effective for exchanging feedback with attorneys than email or other written communication.
Question: Can you provide some tips and best practices for startups when it comes to drafting patent applications to increase the likelihood of obtaining valuable patents?
Prof. Sporer: Approach the patent application like you would a cooking recipe. Clearly and precisely describe what your invention is and what it consists of, beginning with a straightforward introduction to the technology you’re proposing. Include details of the steps involved in your invention. You can start with the problem your invention solves and systematically explain how it accomplishes this.
Provide information on how the invention could be adapted or altered, demonstrating your understanding of the technology and its potential applications.
Some countries require block diagrams in patents. Depending on the countries, block diagrams look different: Some countries prefer a numerical system for describing the different elements and features of your invention, while others rely more on descriptive text. Some countries use both in combination. I would recommend starting with text only and leave the necessary adaptation to the patent attorney.
Last but not least, where applicable, reference relevant texts in your patent application. This can include prior art, scientific principles, or industry standards, adding depth and context to your invention description. Be specific when citing non-patent texts; instead of referencing an entire 200-page PhD thesis, cite the exact page or section to avoid high translation costs and ensure clarity.
