Introduction to IP Portfolio Building Part I: Early Days

Executive Summary

Early and effective intellectual property (IP) protection can make or break a growing business. Patents and IP registrations for trademarks and copyrights can help form an effective "economic moat." Inventions, branding and trademarks, and original content creation can become critical assets that your competitors want for as little as possible in return. While filing a provisional patent application is a useful starting point, it's only the beginning. Startups and scaling companies must take deliberate, well-timed steps to build a resilient and valuable IP portfolio—before competitors or investors force their hand.

Key Takeaways:

• A provisional patent secures a priority date but must be followed by a non-provisional patent—often sooner than the 12-month deadline—to avoid costly gaps or loss of rights.

• Early IP missteps—like relying solely on provisionals, delaying trademark registration, or disclosing inventions without protection—can lead to irreparable harm.

• Building a full IP portfolio (patents, trademarks, trade secrets, and copyrights) aligned with product development and market strategy is essential.

• Global rights can be preserved with the Patent Cooperation Treaty (PCT), but only if deadlines and costs are strategically managed.

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I. Early Intellectual Property Strategy: Getting the Timing Right

Whether you're a startup preparing for launch or a mid-stage company expanding its product line, the timing and scope of your IP decisions directly impact your valuation, defensibility, and market position. Poor timing—especially failing to protect an invention or ornamental design before public disclosure or investor meetings—can result in permanent loss of rights.

Even for established companies, many forms of intellectual property may be under-protected or overlooked, such as logos, product names, slogans, technical data, and product designs. An IP strategy is not a one-time event—it requires active management and regular review.

A. Protecting Inventions? Start with Provisional Patent Applications At Minimum—But Don’t Stop There

A provisional patent application is a valuable tool for capturing an early filing date with lower up-front cost and less formal requirements. It allows your team to say "patent pending," which can deter competitors and build investor confidence.

Beware: too many companies misuse provisional filings as a placeholder—often without complete or enabling disclosures—and wait the full 12 months before filing a non-provisional. This introduces risk:

• Incomplete coverage: Only what was actually disclosed in the provisional gets the early date. Improvements or broader claims added later do not get backdated.

• Missed opportunities: Delays may result in disclosures that destroy novelty, missed funding or partnership opportunities, or loss of rights abroad.

  
  

Pro Tip: If your invention is well-developed and you're serious about protecting it, go straight to a non-provisional. Or file a strong provisional, followed by a non-provisional within 3–6 months, not 12.

B. Transition Strategically to Non-Provisional Patents

To maintain your filing date, you must file a non-provisional within 12 months of the provisional. But timing this transition is strategic—not just administrative.

You can:

• Add new features via a second provisional before filing the non-provisional

• File multiple applications to segment coverage (e.g., core tech vs. product design)

• File earlier than 12 months to avoid triggering statutory bars based on public disclosures or offers for sale

• File separate design patent applications as soon as possible to product ornamental features

  
  

Critical Pitfall: Filing a weak or generic provisional and waiting a full year can mean your “priority date” isn’t worth much—and your competitors may file before you do.

C. Build a Complete IP Portfolio—Not Just Patents

Patents include utility patents and design patents and a robust portfolio includes both types of patents if applicable to the IP. Utility patents protect inventive devices, manufacturing processes, software implementations, and compositions of matter, for example. Design patents protect inventive ornamental designs. A well-protected business, however, doesn’t rely on patents alone. Especially in early or growth stages, companies should align IP strategy with their branding, marketing, and technical development roadmaps. Consider:

• Trademarks: Register your company name, product names, and logos early. Failing to secure your brand can lead to legal disputes or forced rebranding.

• Trade Secrets: Protect internal know-how (formulas, customer data, manufacturing processes) with NDAs, access controls, and policies.

• Copyrights: Secure rights to creative assets like software, marketing content, and product documentation.

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Regular audits ensure these assets stay aligned with the business and are properly documented and owned.

D. Think International—Before It’s Too Late

If global sales or manufacturing are part of your business plan, start thinking early about international IP. The Patent Cooperation Treaty (PCT) gives you up to 30 months from your U.S. filing to enter most foreign markets, but you must start with a timely U.S. or PCT filing.

Strategic Tip: Don’t delay foreign filing decisions until the last minute. Costs rise quickly, and international strategy should reflect actual business needs—where you’ll sell, partner, or be copied.

Coming Next: Part II – Expanding IP Protection We’ll cover portfolio management, budgeting for growth, and incorporating competitive intelligence and freedom-to-operate assessments into your long-term IP strategy.

Questions? Reach out to discuss how we can help you develop a proactive, business-aligned IP strategy before it’s too late.