GLS Startup Law

Introduction

“Intellectual property protection isn’t a one-and-done job — it’s a continuous process of defence and renewal.” – Matt Glynn

For startups, IP prosecution is the operational side of safeguarding your intellectual property rights (IPR). It’s not just about registering trademarks or patents once — it’s about maintaining them, meeting filing deadlines, liaising with registration authorities, and ensuring your protection keeps pace with your business growth.

Neglecting IP prosecution can lead to loss of rights, costly re-filings, or worse — competitors swooping in to claim your space.

IP Prosecution – What Is It?

PAA: What does IP prosecution mean?
IP prosecution refers to the processes and activities involved in securing and maintaining IPR, such as preparing applications, responding to examiner reports, handling renewals, and liaising with IP offices.

PAA: Is IP prosecution the same as IP litigation?
No — prosecution is about acquiring and maintaining rights, while litigation is about enforcing them in disputes.

Why This is Important

This is an important stage of the start-up journey because:

◼️Right preservation – Missing renewal dates can lead to irreversible loss of rights.

◼️Market protection – Ongoing filings protect your expanding market presence.

◼️Portfolio organisation – Ensures your IP is tracked and up-to-date.

◼️Global reach – Manages international filings and compliance.

◼️Investor confidence – Demonstrates operational discipline over key assets.

◼️Cost control – Avoids expensive re-filings due to lapsed rights.

PAA: How often should IP rights be renewed?
Trademarks typically every 10 years; patents have annual or staged maintenance fees, but it varies by jurisdiction.

PAA: Who handles IP prosecution in a startup?
Often outsourced to IP attorneys, but should be actively monitored internally.

Consequences of Not Addressing This Issue

1 Legal Implications

◼️Permanent loss of protection if rights lapse.

◼️Risk of third parties registering your lapsed IP.

2. Founder Relationship Issues

◼️Disputes over who dropped the ball on key assets.

3. Commercial Implications

◼️Reduced competitive edge if your brand or invention loses protection.

4. Operational Implications

◼️Extra cost and effort to regain lost rights, if possible.

5. Biz Valuation Issues

◼️Lower valuations due to weak or expired IPR portfolios.

PAA: What happens if you miss an IP renewal deadline?
You may lose your rights entirely, and in some cases, they cannot be recovered.

What You Should Be Doing

◼️Create an IP calendar – Track renewal dates, deadlines, and filings.

◼️responsibility – Have a clear owner for IP prosecution tasks.

◼️Engage IP professionals – Use experts for complex applications.

◼️Automate reminders – Use IP management software.

◼️Maintain complete records – Store copies of all filings and certificates.

◼️Budget for renewals – Ensure funding is allocated annually.

PAA: Can IP management software help?
Yes — it can automate reminders, track status, and store documents securely.

Case Studies

Apple Inc. – Global Filing Discipline
Apple’s aggressive IP prosecution strategy involves continuous filings and renewals worldwide. In 2022 alone, Apple filed hundreds of new trademarks and patents, ensuring market dominance and blocking competitors in emerging product categories like AR headsets. Their consistent prosecution work maintains a watertight portfolio across multiple jurisdictions.

Tesla – Patent Expiry Oversight
While Tesla famously opened many of its patents to the public, its underlying IP prosecution remains robust for core technologies. The company meticulously renews and updates filings, particularly around battery tech and manufacturing processes, ensuring protection where it still sees competitive value.

McDonald’s – “Big Mac” in the EU
McDonald’s famously lost its “Big Mac” trademark in the EU in 2019 after failing to provide sufficient proof of genuine use in opposition proceedings. This loss underscored the importance of actively managing and evidencing use of registered marks — a vital part of IP prosecution.

PAA: What famous companies have lost IP rights due to poor prosecution?
McDonald’s (Big Mac in the EU), Harley-Davidson (sound trademark in the US), and Microsoft (various regional lapsed marks).

Key Legal Definitions Related to This Issue

◼️Renewal – Extending the legal protection period of an IPR.

◼️Maintenance Fees – Payments required to keep patents in force.

◼️Proof of Use – Evidence that a registered trademark is actively used in commerce.

◼️International Registration – A single application process covering multiple countries (e.g., Madrid Protocol for trademarks).

PAA: What is the difference between renewal and proof of use?
Renewal extends the term of protection; proof of use shows the mark is genuinely in commercial use to avoid cancellation.

Final Thoughts

IP prosecution is the backbone of long-term intellectual property management. Startups that neglect it risk losing their most valuable intangible assets — sometimes without even realising it until it’s too late.