An effective patent strategy should create assets and avoid trouble. The following tips identify the basic components to be considered in developing a strategy.
Use Employment Agreements
Employment agreements should be used with all employees who are hired to invent, write, and otherwise create. The agreement should state (1) that the company owns everything invented or created by the employee that is related to the company's business, and (2) that the employee will maintain the confidentiality of the company's nonpublic information. Additionally, the agreement may contain a noncompete provision.
Develop an Intellectual Property Budget
A budget provides context for making decisions. Patents are long-term assets, and the patent budget should be viewed as an investment. A company's patent budget often is an internal statement of the company's expected creativity.
Create a System for Collecting the Inventions
A system for collecting invention information enables informed decisions. The system may be anything from e-mail messages to formal Invention Submission forms. Some companies choose to reward an inventor (with recognition and/or money) for identifying protectable inventions.
Prioritize the Inventions
Often, the inventions must be prioritized for business purposes, including patent purposes. The prioritization may be performed by a single person or a committee representing a variety of areas (e.g., engineering, marketing, sales and finance).
Conduct Patent Searching
Patent searching will help determine the patentability of the invention and whether the invention will infringe the patents of others. A company may wish to set up a patent watch to monitor for patents issuing in the company's industry or to specific competitors.
Make Timely Patent Filings
Deadlines for patent filings are strict. To protect worldwide patent rights, a U.S. application must be filed before the invention is disclosed nonconfidentially anywhere in the world. Sooner is almost always better than later. Consult your patent counsel if you have any questions regarding timing requirements.
Make Foreign Filing Decisions Carefully
Although "international" and "regional" applications can be filed, ultimately the patent must be registered in each country in which protection is desired. The investment typically is significant, and strategic decisions can enhance the return. For example, filing in Germany and the United Kingdom may effectively protect Europe if a competitor would not make a product that could not be sold in the protected countries.
Pay Patent Maintenance Fees Carefully
Maintenance fees must be paid periodically on every patent in every country. If a maintenance fee is not paid, the patent expires. An upcoming maintenance fee is a good opportunity to evaluate the continuing value of that patent in that country. If a patent's current or expected value is less than the remaining maintenance fees, consideration should be given to dropping the patent.
Enforce Your Patent Rights
A patent is a right to stop others, and the patent owner is responsible for enforcing its patents. Delay can create problems, so infringements typically should be pursued promptly. Usually, the first step is a cease-and-desist letter. Typically, the parties resolve the issue on their own. If that does not happen, mediation, arbitration or litigation may be pursued.
Of course, a particular company's patent strategy may–and often will–include components beyond these basic components. However, by addressing the basics, a company will be well on its way to developing an effective patent strategy that creates assets and avoids trouble.
If you have any questions, feel free to contact your WN&J attorney or Chuck Burpee at 616.752.2141 or firstname.lastname@example.org.