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Protecting Your Company's Innovations

February 02, 2018
Post by Kirk M. Hartung

In 2017, over 600,000 patent applications were filed with the U.S. Patent Office, the most in its history. Clearly, a business plan for intellectual property may provide substantial value to your company, or you may be leaving substantial value on the table. Failure to plan is, in essence, a plan to fail. A thorough plan, properly executed, can provide protection for innovations, payback for research and development costs, competitive advantage, and a revenue stream. 

Whether innovation derives from sweat of the brow or a flash of genus, a strategic plan can maximize the value of newly developed or discovered inventions. Without a plan, opportunities may be lost, and competitors may encroach without recourse. 

Therefore, the following is a brief summary of steps and factors to consider for protecting your intellectual property. 

  1. Every employee and officer of a company should sign an employment agreement that assures that any inventions relating to the company business will be owned by the company. There also should be a policy regarding submission of ideas and developments, and a procedure to evaluate the submissions in a timely manner. An invention submission form can be useful in capturing key information, such as a brief description of the invention, the problems in the prior art, the structural and functional features, the benefits, etc. The American Invents Act, which began in March of 2013, created a race to the Patent Office because it states that the first application on an invention will have priority over later applications. Therefore, delay in filing an application may result in loss of patent rights. Time is of the essence!
  1. Although not required, a patent search is often useful in determining the potential likelihood of obtaining a patent. A patent search will also help in writing the patent application by focusing on differences between the invention and the prior art. The search should cover issued patents and published patent applications. Other technical literature and information on commercially available products can also be helpful in evaluating patentability of an invention.
  1. It is also important to consider, early on, whether foreign patent protection will be sought. Most foreign countries preclude a patent if there is any commercialization of the invention before the first patent application is filed. A U.S. patent will cover making, using and selling the invention in the United States. Thus, imports and exports will be covered. However, if another party makes and sells the invention outside the U.S., you don’t have protection unless you get foreign patents.
  1. In the United States, there is several filing options. An initial provisional application may be filed, to establish your place in line at the Patent Office, and to “buy” another 12 months of time before filing a utility patent application. Both a provisional and a utility application need to be as complete as possible. Filing of the utility application starts the examination process. Expedited examination may be obtained by paying an additional government fee at the time the utility application is filed. A design application may be appropriate to protect the appearance of a product, if the appearance is ornamental, rather than functional. Sometimes, both a utility application and a design application maybe be obtained on a new and non-obvious product. Foreign patent applications should be filed within one year of the provisional or utility application filing date, or within six months after a design application. Before any patent application is prepared, it is important to give your patent attorney all the details of the invention.
  1. Once a patent issues, the patent number should be used on the product, on marketing materials, or alternatively, on a company website dedicated to your patent portfolio.
  1. After the patent issues, you should regularly police the conduct of your competitors to be sure no one is infringing on your patent rights. If so, a plan of action to deal with the potential infringer should be determined and pursued as quickly as possible.

Patents are complex, timing is critical, and delay or incomplete information may be detrimental. Therefore, develop a business plan, implement the plan, and be sure that everyone understands the plan.

For more information on this topic, contact Kirk M. Hartung by calling our office at (515-288-3667).


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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.

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