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TechRoadmap Directions
  Intellectual Property Issues of Interest to High Tech Companies
Vol 2 Issue 7 July/August 2002

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Is Pogo right?

We have met the enemy and he is us - Pogo

Tip of the Month

IP Links of Interest

On-Line Patent Glossary

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  Welcome!!
Directions, is a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices.

Faced with pressures to get product to market (and show some sales revenue), many high technology companies find themselves in an on-going battle with themselves, where Sales and Marketing is on one side and R&D and Engineering on the other. Do you find yourself in their position? Read "We have met the enemy and he is us" to learn more.

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  • Is Pogo right?
 
Pogo

Do you think that Pogo is right and that, at least from the intellectual property point of view, you are your own enemy? Please participate in a little survey by clicking the appropriate link below.
"Yes"

 

We are so driven to get product to market we sometimes overlook our IP.

"No"

 

We usually file a patent application before approaching potential customers

 
  • We have met the enemy and he is us - Pogo
  Are your Engineering and R&D staffs busily trying to make your product perfect (or at least make it reliable) while at the same time your Sales and Marketing departments are out beating the bushes for customers to make your investors happy? Are there pitched battles across the conference room table as Sales presses Engineering for a product release date and Marketing tells R&D that the "Voice of the Customer" is calling for seven new features? If you answered "no" then you must not have any competition - congratulations; if you answered "yes", you might want to check that your intellectual property - the basis for any sustainable competitive advantage - is not an innocent victim on the battlefield....Read on...

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  • Tip of the Month
 
Carefully track the timing of any release of information about a new product:
  • Engineering Disclosures - While it is important for engineers to attend conferences and talk with potential vendors, remember you have only a one year window to file after an unprotected disclosure.
  • Marketing Disclosures - It is inherently Marketing's job to get customers' feedback on new product concepts and generate excitement. Again, that year can disappear quickly.
  • Sales Disclosures - These releases can really sneak up on you, since even an NDA doesn't doesn't prevent the 1-year clock from starting once you've made an offer-to-sell.
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  • IP Links of Interest
  US Patent office - Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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  • On-Line Patent Glossary
  The following link should take you to the web based version of Directions, where you will find the on-line Patent Glossary.

Industry's Best Glossary
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email us :: visit our site

phone: 617-243-0007

  • We have met the enemy and he is us - Pogo - continued
 

While failing to file a patent application is a significant and recurring problem for companies of all sizes, it seems to be an affliction that disproportionately affects mid-sized firms. Too small to have a full time person managing their IP, mid-sized companies have also outgrown their founder's capability to keep on top of every development in process. Without realizing it, these companies sell or reveal their inventions publicly long before the engineers feel they are "finished", and time and time again the court docket is filled with patent infringement suits that backfire - suits in which the patent is declared invalid because it was filed too late.

What is "too late"? And why does the problem seem to show up way after the patent issues? Under the patent statutes, a person is entitled to a patent unless "...the invention was in public use or on sale in this country, more than one year prior to the date of the application...", so too late means you waited more than 1 year to file after you first showed your invention in public (that is, without a non-disclosure agreement) or after you first offered your invention for sale (even under an NDA!). The problem often doesn't show up until you try to enforce your patent rights because the patent examination process is not an adversarial arena like the patent court. The competitor you are trying to sue may now employ people who used to work for you and remember pitching the product to someone long ago. And web sites like Bountyquest.com can enlist hundreds of hungry bounty hunters who bust your patent by remembering that old conference presentation where your VP of Marketing was trying to create a buzz.

The underlying cause of this problem is often the difference in goals and perceptions between engineers developing a product and sales/marketing staff trying to, well, sell and to develop a pre-sales relationship with potential customers. Engineers, strangely, are often reluctant to even believe their ideas are patentable and sales staff needs the latest/hottest product to compete in the marketplace. Naturally, with no advocate, Intellectual Property falls into the cracks.

Lest the sales and marketing departments come off as the villains here, engineers are often equally as guilty of ruining your opportunity to preserve you competitive advantage. In a case recently decided (July 9, 2002) by the Court of Appeals (Netscape/Microsoft/AOL v. Konrad), Konrad, the engineer/inventor had his patent invalidated because he openly demonstrated his remote database access software, allowed uncontrolled use of the software by others, and contracted with a university laboratory to install the software, all than a year before filing his patent application.

While it is conceptually possible to "lock down" your company to control all release of information on products under development, a process of employee education and IP management is both more effective and more efficient. On the one side of the battlefield, sales and marketing personnel need to understand the long term detrimental effect of openly discussing or selling a product for which no patent has been filed. They need to help get non-disclosures in place and to clearly identify offers for sale. Perhaps even more critical, they should report any such release of information so that you know patent filing clock is ticking.

On the other side of the Maginot line, engineers need to learn to think like inventors, understanding the long term benefits of protecting the ideas they are working on and identifying them to you as early as possible (instead of waiting until they are "perfect"). Engineers must also take on the responsibility of recording and reporting their outside contacts for, as was demonstrated in Netscape et al., v. Konrad, some engineers like to "talk up" their ideas too.

Of course, nothing will change if your company's top management doesn't buy in itself. If you can't commit the time to manage your IP - to run Invention MiningSM, meetings to identify potentially patentable ideas before the engineers do, to coordinate patent filings based on sales and marketing disclosures, to help negotiate between the factions - then bring in the help you need on a full or part-time basis. To do otherwise is to let your competitors walk in over your decimated IP.



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Nothing in the preceding article should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.