Four rules for effective intellectual property management

I recently read an Idealog article on improving your patent spend. It contains some useful advice (ask about the lifetime cost) and some things I can’t imagine any company having enough resource to do.

Knowing how to find attorneys in multiple countries and manage all of the information coming in from them? The only companies I know that do that on a regular basis are university commercialisation companies with skilled staff – Auckland Uniservices has two patent attorneys working as their IP managers to manage their portfolio – and they still use patent attorney firms to help them.

So, if you’ve only got one or two patents, or are just starting, what do you do?

Here, I present my four rules for improving your patent (and trade mark) spend – and to give you the best possible protection. If you spend money on it, make sure it’s worth it!

1. Do research

The biggest mistake companies usually make is to run off to a patent attorney the first time they have an idea or new product. They are not sure why, or might think a patent is a magic bullet that will stop their competitors chasing them.

Unfortunately, a patent can only protect the part of their product that is considered an invention, i.e. the part that is new and inventive (not an obvious improvement). This rush in the “idea-stage” leaves the patent attorney with two options: offer to do preliminary searching for you at a cost of thousands of dollars, or guess and hope for the best.

A better idea is for you to spend a few hours doing your own research, so you can confidently discuss with the attorney how your invention is different than previous innovations. You will also be confident that if this difference is only minor, it will still be worthwhile to protect from a business perspective. Spending years and money obtaining a patent only to find that a competitor can easily design around it can be heartbreaking.

Some great websites that let you easily search historical patent documents are Google Patents and the European patent office. Bear in mind to be patented your invention must be different from anything published, whether or not the invention in the publication worked or was even was sold as a product.

While you’re searching, you can also keep an eye out for current patents that might be out there for similar technologies. If there’s something that could block you selling your technology in the future, you’ll want to know sooner rather than later. Knowing which ones to worry about can be difficult, but knowing which documents to ask your patent attorney about is a great start.

2. Avoid the “not invented here” bias

It’s amazing how often New Zealand companies will spend tens of thousands, even hundreds of thousands of dollars over many years to get an overseas patent, but won’t even consider licensing in an existing patent from another company. This is called the “not invented here” bias. If it’s “not invented here”, people often don’t want to know about it.

However, existing patents can be a great investment. If you can successfully license an existing patent off a company who has already paid the initial costs, and guided it through the examination process in their local patent office, you can end up with a current, granted patent to use for a fraction of the cost. There’s also no need to wait years or worry that your application will be denied. This is also a good strategy if you find a patent that might impact your freedom to operate in a country. Instead of an idea dead in the water, you might have the exclusive rights and be the only license holder in a region.

Sounds like it might be too hard? Or that even asking if someone is open to a license might alert them to your presence? Consider this statistic – over 95% of all patents are never used. That means there’s an awful lot of current granted patents out there that belong to companies with research programs that may have closed or projects that ran out of money, and / or products that didn’t sell in the form originally devised.

It is relatively simple to get a third party law firm to enquire on your behalf to buy or license – perhaps anonymously at first. It’s much harder to find out years later that you can’t go into a region because a competitor snapped up a license a couple of years before.

3. Get advisors you trust and can talk to

My biggest advice for reducing patent attorney spend, is to find someone you click with. Too many patent attorneys rush forward with what they think you said, rather than taking the time to discuss all your concerns and plans for your IP.

If the patent attorney doesn’t ask what your future plans are, don’t stay. If they seem to brush you off, find someone else. If emails come through with a indecipherable subject line and only an attachment as a letter, let them know you read your emails on your phone and that’s not good enough.

The best advisors ask about your whole business and plans, warn you of costs in advance, and help you understand the sometimes very confusing world of patents. They should be willing to explain things to you, and use words that aren’t full of legal jargon.

Similarly, you should take the time to read every thing they send you. Sometimes you might hear from your patent attorney only once every 6 months as a patent application slowly creeps through the examination stage at patent offices around the world. Your product or market or project position could have changed significantly during that time.

Understanding which instructions are asked for and what is happening at each stage is vital to ensuring that your patent application is still relevant to your business needs.

4. Think about trade marks, copyright and contracts

Lastly, I wanted to say – don’t just focus on patents. Patents are the sexy things of the intellectual property world – everyone thinks they need one. Or, if you think your company doesn’t need one, you forget about IP altogether.

Don’t forget about branding and trade marks. If the Coca Cola® head office burnt down tomorrow, they could rebuild, but if they lost the right to use their name and branding, their stocks would plummet overnight. Trade marks need to be searched just like patents, and before re-branding, you should make sure your brand isn’t trade marked in another country. You can file for a trade mark at any time, but it pays to check you won’t get in trouble. Rebranding an entire product line can be an expensive exercise.

Likewise, copyright often forms a basis of design, software and photography businesses. Ensuring your employment contracts and contractor agreements specify who owns any copyright produced will make for easy sales, licensing and investment options in the future, and potentially help avoid expensive battles.

In summary

These four tips will help you to have an IP strategy that is driven by research, and understanding of your invention and the patent space around it. Knowing what you want before you sit down with an attorney can help save you money and ensure you have robust, effective protection.

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