Strategic Patenting
What to consider when you're filing a patent and strategic
decisions you'll need to make.
by Jennifer A. Redmond, Inc.
Magazine
What is a patent? In a nutshell, it's a
grant issued by the U.S. Patent and Trademark Office that gives you the sole
right to manufacture, use, and sell an invention for 14 to 20 years.
But the patent process can be time-consuming -- with
one to three years in the application process alone -- and costly. So how can
companies patent strategically?
Inc.com recently talked with John Rock, director of
intellectual property at Augustine Medical in Eden Prairie, Minn., to tap his
expertise in this arena. According to him any patent you secure should be
thorough enough and defensible enough that it covers all parts of your invention
-- preventing others from copying your idea and lifting your technology, and
keeping competition at bay -- or it's wallpaper. You decide.
And if you're going to stand behind your patents, you
really need to manage them. You've got to know the limitations and strengths and
weaknesses of your intellectual property.
If you're considering patenting your company's inventions and wondering how to
go about it strategically, read these other recommendations from Rock:
Understand that patents are important capital assets.
Start-ups, says Rock, need to know that patents really help capitalize your
company -- they are an asset, an investment in your company. If you're raising
start-up or growth capital or if you're selling the organization, having
intellectual property can be a significant factor in the company's valuation.
Determine your long-term goals. Are you building a
company with the intention of selling it? Are you planning to license the
technology you're developing? Or are you in it for the long haul? Those are
factors that will help determine how you patent.
If you're planning on building a company for the long term, you'll want to be
aggressive by filing many patents around your products and technology, to "own"
all aspects of it.
Say you have an idea for a product, and you've
determined the best material to manufacture the product with. Naturally, you
patent that. But Rock believes you should protect many versions of your product.
He says to obtain patents for manufacturing the product using various materials
but to take only the best one to market -- hold on to the others.
Strategically, you may want to create a barrier of entry for your competitors.
In that case you may file several patent applications on many different things
related to your technology, even if you are not interested in developing the
technology yourself. That will prevent competitors from getting claims on other
aspects of that technology.
If you plan on selling the company or licensing your technology, your patent
strategy will differ. You may want to create barriers to entry, but you might
take a more limited approach to patenting.
Consider the life cycle of your technology. Let's say
you have a new technology, and you know that it's going to have a short shelf
life -- in 5 years the innovation will be obsolete. You take 2 to 3 years to get
a patent claim, and given the product's life span, you've got one or 2 years
during which it will be on the market. So you have a 20-year patent with 17
years of protection left on a product that's no longer viable in the market.
Rock asks, What's the point?
An example of a short-term product is a computer chip
-- you know it's going to be obsolete in a few short years because someone is
going to produce something that's twice as fast. Unless you have patented the
underlying technology that every one of those chips needs, consider whether it's
worth patenting before you go to market.
Establish your markets. Are there international markets
for your product? Make sure you know, because the clock is ticking. A patent
will not be granted in the United States unless the application is filed less
than one year from the date that the invention was publicly disclosed. Then you
have one year from the date you filed that application to file in another
country.
The other global-versus-domestic consideration is cost
-- obtaining international patents is expensive, and the ongoing annuities that
you have to pay to maintain them overseas can be prohibitive. Typically you can
spend $50,000 getting worldwide coverage, so you want to be sure about your
international strategy. You can mitigate some of that cost by cherry-picking
countries in which you'd like to patent. It helps to look at countries that have
solid legal systems and strong enforcement rules in place, Rock advises.
Monitor your patent attorneys. Once the patent
application is filed, a patent examiner and the applicant argue what aspects of
the invention the patent will cover. Let your patent attorney know up front that
you want defensible, strong patents and that you want to monitor patent
activity. Always review any arguments before they are submitted to the patent
office. If you don't get good patent coverage, you might not want to put money
in the product, Rock says.
And Rock recommends that you involve your engineers in
the process. Engineers can help patent attorneys understand the technology you
want to include in the claim, and they can think of alternative embodiments --
different materials, things you left out, the essence of the invention, and
other ways of doing what you're doing. Engineers can help you see what is
critical to the invention -- and help ensure that you've got the those important
elements covered.
Reprinted with permission from
Inc.com
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Louisiana, unfortunately, has no such
resource. Perhaps you could be the one to start something like
Invent Alabama here in Louisiana.
There are also national clubs and
associations for inventors. The major ones are:
InventNet Forum
10531 Royal Oak Way
Stanton, CA 90680
fax: 714-844-4366
info@inventnet.com
www.inventnet.com
National Congress of Inventor
Organizations
Steven Gnass
P.O. Box 93669
Los Angeles, CA 90093-6690
213-878-6952
fax: 213-962-8588
ncio@invention
convention.com
www.invention
convention.com
United Inventors' Association of the USA
Carol Oldenberg
P.O. Box 23447
Rochester, NY 14692
716-359-9310
fax: 716-359-1132
uiausa@aol.com
www.uiausa.org
See a
list of Louisiana patent attorneys |