Securing Proper Patent Protection for an Idea is Paramount, Says Brooks Kushman’s John LeRoy

Entrepreneurial companies generally start with a great idea. But hatching that idea is not always enough to ensure a start-up’s success. How that idea is protected defines its ultimate value to the entrepreneur, the venture capital investor and the licensee or acquirer of that intellectual property, contends John LeRoy, the chair of Brooks Kushman’s Open Source Practice.

“In the U.S., it’s perfectly legal to copy that which is not patented or copyrighted,” he explains. “If you are an inventor, our firm will help you obtain patents to protect the invention in which you have invested your time, energy and money.” For a venture capitalist looking to maximize returns, an inventor who has a brilliant idea but no intellectual property rights will “be a tough investment.”

Currently, Brooks Kushman’s staff of 77 intellectual-property attorneys in Michigan provides intellectual-property legal services to individual inventors, entrepreneurial start-ups and large, established corporations in the medical devices, consumer products, telecommunications and automotive sectors. LeRoy works closely with U-M Tech Transfer to help Michigan faculty and researchers file patents on breakthrough technologies and spin out new companies from the University to commercialize these innovations.

Although the hit ABC TV show Shark Tank has riveted viewers’ attention on the drama surrounding ambitious start-up founders who go head-to-head with a panel of tough-minded venture capitalists, there is still a lack of genuine understanding of the difference between a run-of-the-mill patent and a high-quality patent, according to LeRoy.

“An inventor needs to have a strategic patent portfolio that really captures the landscape,” he advises. “If you are a one-trick pony and hold only a single patent on a specific feature of your idea, it is easy [for competitors] to design around it. A single patent is not as holistic or comprehensive as venture capitalists want it to be.”

A patent also must be enforceable, according to LeRoy. “A patent needs to have the correct breadth and be engineered for licensing or enforcement,” he explains. “If it is not written correctly and no one utilizes the invention the way it is patented, that can be a problem.” Brooks Kushman’s lawyers work with clients on both sides of the patent acquisition and enforcement equation. “We represent large automotive companies in defense cases where we regularly try to pick apart, or deconstruct, patents that are asserted against them,” LeRoy continues. “It’s our job to find the weak spots. So we know from both sides of the coin what it takes to make an enforceable patent.”

As emerging companies mature and their products continue to evolve, start-up founders can derive additional benefit from the experience and ongoing patent services of their attorneys. “When you have a patent, you have a broad range of options,” LeRoy says. “You can try to peddle the patent on commercially reasonable terms, or license it to a large company or litigate it. There are a lot of options in between, so knowing the pros and cons of each alternative for leveraging intellectual property once you have a patent is critical.”

Brooks Kushman is a key sponsor of the Michigan Growth Capital Symposium and other events and competitions that support innovation. “The MGCS provides a great opportunity for vetted start-ups to showcase their inventions and their potential,” LeRoy remarks. “Everyone comes to the event to catch the next new wave or trend of products entering the market.”

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