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  Intellectual Property Issues for High Tech Companies
Vol 3 Issue 8 September 2003

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The Independent Inventor's Dilemma

Patenting 101

Tip of the Month

IP Links of Interest

On-Line Patent Glossary


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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. (You can change your subscription options with the link at the bottom of the page)

September means back to school and, even though it has been many years since most of us have been in school, the evening nip in the air is still the harbinger of a time to get our focus back to basics. While I think we don't need the three R's, taking a review course or two would probably do us all good.

This month's issue can be considered a review course in the patent process. Find out what one aspect of the patent process is most likely to be lacking at your company and why this lack is costing you money by reading "Patenting 101".

  • The Independent Inventor's Dilemma

Over the summer I spoke with three independent inventors, each of whom faced the same problem: should they spend their limited funds prosecuting a patent application or should they risk having their sales "stolen" by an existing, better capitalized company?

In each case the competitors would have no barrier to entry other than the patent. What would your advice be? Do you think the inventors, who will be first to market, can secure a reasonable market share without a patent? Or will they invevitably lose out because of the slowness of bootstrapping?

Let me know what you think.

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  • Patenting 101

Most people think the patent process has three stages:

Invention (conception to reduction-to-practice);
Disclosure (engineering write up to Patent Application); and
Prosecution (filing to - we hope - patent allowance).

These stages are, of course, necessary to obtain a patent but alone they're not enough to build an Intellectual Property portfolio in a successful company. That is, all inventions do not hold equal value for your company. But how do you differentiate between the high value from the low value inventions.

You guide your patenting decisions with a plan, a strategy. If "Necessity is the mother of invention", then "Strategy is the father of patents". Be willing to take the time up-front to figure out what aspects of your product technology need protection and will provide a sustainable competitive advantage. That way, your Invention Review Committee can decide rationally which inventions to patent, which to hold as trade secrets, and which to publish defensively.

What! You don't have an IRC or a patenting strategy! Don't feel bad, you're not alone. Many companies make their patenting decisions on a ad hoc, CTO's gut feel, basis. But these companies often end up spending money on patents that don't advance the company's competitive or financial position.

Note that there are many different patenting strategies. If you have a severely limited budget, you might only file for system level patents. If you can afford it, you can make your patent portfolio an imposing barrier to entry for new competitors by filing patents on every variation of your technology (for example, Morton International, which used to be in the airbag business, has well over 100 patents on airbag technology). Or, your strategy can include patenting technologies just for the licensing potential.

The key lesson from Patenting 101 is you need a patenting strategy to make informed decisions when faced with your engineers' invention disclosures.

Read this article on line.

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  • Tip of the Month
Patenting decisions, whether made by an IRC or by an individual, should be guided by a plan:
  • Develop a patenting strategy - This plan doesn't have to be greatly detailed. What's important is that it lays out a direction that makes sense for your company.

  • Use the patenting strategy - When you are reviewing an invention disclosure, take the plan out of the desk draw and LOOK AT IT!

  • Revise or ignore the plan - Your plan isn't set in stone. Feel free to revise it as the situation changes or substitute a gut feel if appropriate. But if you do this all the time, then maybe you need to think about where your company is going!
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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
  Industry's Best Glossary
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Newsletter copyright 2003, TechRoadmap, Inc. Nothing in the preceding articles should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.


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