IP Asset Management: some alerts-

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.