IP
Asset Management: some alerts-
This article discusses some
basic, often cost-effective steps that businesses may consider to minimize
costs when securing protection of their intellectual property in domestic and
foreign markets.
Once patents are procured, a
major cost concern relates to dispute resolution and enforcement of the patent
rights that topic will not be addressed in this article.
Many businesses rely on the
development of new and innovative products for driving their competitive
strategies and have become savvy users of the intellectual property systems in
their domestic market and in foreign markets. However, as the costs of
procuring and maintaining patent protection progressively increase, businesses
should take adequate steps to manage and extract maximum value from their
intellectual property assets while also controlling their budgets. These steps
include developing an intellectual property protection strategy that aligns
with business objectives, conducting due diligence with respect to their
inventions, making an effort toward having a basic understanding of the
different patenting stages and associated costs, and identifying major foreign
markets for sales, manufacture, and distribution of their products.
Develop
an intellectual property protection strategy that is appropriate for your
business
Businesses
are routinely faced with the tough decision of whether an innovation should be
protected through patents, kept as a trade secret, or abandoned in domestic and
foreign markets. Therefore, it is important for a business to develop a focused
intellectual property protection strategy that is in alignment with the
business’ strategic needs.
Unless a business has unlimited
resources, it cannot afford to apply for and maintain patent protection of
every new development. Some developments may not be patentable because of prior
art or other issues, or may not be worth the expense of applying for patent
protection. In such instances, these developments are better kept as a trade
secret or published defensively to prevent third parties from patenting the
development. While these two non-patenting options have little or no associated
costs relative to the patenting process, there are certain risks and
limitations associated with their use, such as difficulties with maintaining
the development “secret” and risks associated with publishing too much
information or creating prior art against the business’ own future
developments.
Conduct
searches and draft the patent application with all the countries of interest
and with costs in mind
Just because a product or
service is not yet commercially available, it does not follow that it is
patentable.
The due diligence should be
performed before the patent application is drafted and filed, during the
development stages, and just before product launch.
To keep search costs down, a
preliminary search of free patent and non-patent databases can be performed. If
that searching is not sufficient, a business should consider using commercial
information service providers to perform a more comprehensive review of
materials. Many of these service providers offer volume discounts depending on
the number and size of the searches.
Post-grant
patent issues-
Keeping in mind the risks and
costs of marketing new products, it is worthwhile for a business to conduct due
diligence, e.g., prior art and freedom-to-operate searches, to determine
whether there are any issues with respect to patentability of the inventions
and the existence of competitor or other third party patents.
The due diligence should be
performed just before product launch.
