Proposed rules changes at the United States Patent & Trademark Office (USPTO), along with the possible passage of the Patent Reform Bill and a sliding/fluctuating economy, have led some to conclude that the rules of the "patent game" have completely changed. A cursory understanding of these changes in patent law and procedure could result in a loss of patent rights, unnecessary expenses and costly litigation.
Innovators and patent owners should think strategically about how to maximize the patent budget, while intelligently and efficiently protecting and defending innovation. Companies need to understand the resources available to monitor the intellectual property of competitors and potential acquisitions. Here are eight strategies and issues to consider when reviewing your current patent portfolio, future patent applications and corporate patent procedures.
Think Broadly
Your patent budget – whether large or small – can no longer fund every new discovery by your research and development teams. The demand for research or patent managers to efficiently utilize the budget is high. Therefore, it's important to thoughtfully review the inventions, tie them together where available, and determine early in the process where you want that patent to fit within your portfolio in the long-term (more than five years). A patent committee that meets regularly is useful, where the committee includes key inventors, research managers and patent professionals. Effective patent committees discuss how new inventions are tied to prior research and patent families, how innovations can be logically grouped together in patent applications, and what additional information is needed from R&D teams to get a complete patent application on file.
Evaluate Where Innovation Fits Into Company Platform
Is the technology the foundation of a larger platform for the company or a "One-hit wonder." If it's the former, then filing a broad patent application followed by a series of continuation applications and defensive publications may be the ideal strategy to lock down a field of research before competitors surface. If the application is designed to protect an invention that isn't related to other company technologies (the "One-hit wonder"), then your patent budget may be better spent by keeping the information a trade secret or releasing it as a defensive publication.
Create Patent Savvy R&D Teams
Companies that base their bottom line on innovation lose money every year by not educating research and sales teams on the patent basics, including inventorship, documentation and the implications of public disclosures of inventions. First, the Patent Reform Bill includes a provision that puts the United States in line with the rest of the world as a "first to file" country and no longer a "first to invent" country. Therefore, if this Bill passes, it becomes a "race to the Patent Office" for patent applications, and keeping innovations under wraps until an application has been filed is key.
Second, the USPTO is rapidly moving toward requiring prior art searches and related applications be fully disclosed to the USPTO, including search logic, databases used, related inventors, related technologies, etc.
Finally, public disclosure of an invention may result in an immediate loss of the ability to file patent applications on that invention in foreign countries. Research teams should participate in regularly-scheduled training sessions to review new patent rules and procedures, the details of inventorship, and updated documentation practices.
Develop an Invention Disclosure System
This strategy point is the next logical step after establishing a Patent Committee and setting up regular patent training for research and sales teams. The value of intellectual property is directly tied to how researchers initially document their work. Smart and strategic documentation of potentially patentable subject matter can mean the difference between a strong patent or patent family, and patent protection riddled with hidden traps for the unsuspecting company. There are three strategic initiatives that should be implemented to maximize your patent protection: a) developing a comprehensive invention disclosure form or system; b) collecting and archiving supporting documents, c) ongoing training of employees, as mentioned earlier, on invention disclosure standards and practices.
Develop an Intelligent Foreign Filing Strategy
The Patent Cooperation Treaty process and foreign filing of applications have changed considerably over the last five years. It may be desirable to file in every major country, but can your company defend and enforce those patents? Also, consider the average cost of patent protection in each country is roughly $10K per patent application per country. In Europe, the costs increase to $15-$20K per application. Your corporate team should consider a number of variables when reviewing whether to file in other countries: a) Does your patent budget provide for the added expenses? b) Can you defend and enforce your patent in those countries? and c) Do you need protection in each of those countries or is there a more strategic approach to foreign filing?
Consider Accelerated Examination
The USPTO has new procedures in place for accelerating the examination of a patent application. Normally, a patent application can take 24-60 months to proceed through the USPTO examination process. For some patent applications, such as those in the computer/Internet arts, it may be desirable to request accelerated examination, which allows for a 12-month filing-to-issue examination period. However, the request for accelerated examination, along with documents to support examination, must be filed when the application is filed.
Review Deals for Sales/Transfer of Patents/Patent Applications
The USPTO provides several benefits to small entities (small businesses) when filing patent applications, such as 50 percent off of filing fees, reduced compliance requirements under the new rules, etc. When "small entity status patents" are transferred or sold to large entities, they lose their small entity status. The increase in costs and procedures associated with the new large entity status should be part of any due diligence examination and evaluated prior to finalization of the transfer.
Use Public USPTO PAIR Database to Track Competitors and Potential Acquisitions
The USPTO provides a public database of the status and submitted documents for all published U.S. patents and patent applications. Under proposed USPTO rules, applicants must provide more information to the Examiners as to why their inventions are patentable. In the past, patent prosecutors tried to keep the files as "clean and clear" as possible of these statements, but that goal may no longer be an option. Therefore, companies should be able to review the behind-the-scenes details of patents/applications of their competitors or potential acquisitions to gain valuable insight as to the true meaning and value of those inventions.
As the USPTO pushes more of the responsibility for examination back onto the inventors, assignees and patent professionals, it is important to understand how the new rules and regulations fit together with established procedures. In addition, inventors and companies who are proactive in reviewing their pending patent applications and documentation procedures, coupled with regular training of research and sales teams, can utilize their patent budgets and R&D resources more efficiently in any economic environment.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
