By James W. Babineau In association with J. Peter Fasse, Gwilym J.O. Attwell, and Adam Donovan
#1 — Don’t panic and abandon your patents and trademarks
Intellectual property can be critical in the distribution of market share during a recovery. If things do turn worse, perceived value in intangible assets can help fuel an unforeseen business deal.
#2 — Do develop a strategy for paring your costs
Assemble a patent committee from marketing and engineering. Task them with (a) evaluating new concepts and how they further your goals, and (b) critically review existing patents for the ones that will retain their value.
#3 — Value your patent and trademark applications individually, not in bulk
Often, the value of a patent or trademark portfolio lies in a handful of patents or marks. While the total portfolio has an overall value on the balance sheet, it is the value of each asset that matters and should be recomputed at each major decision point.
#4 — Don’t abandon your patent applications at random
Each pending application is on its own schedule, and applications awaiting an office action may be maintained at very little expense until an action is issued by the patent office
#5 — Do focus on quality, not just on quantity
Some large corporations derive overall portfolio value in filing many patent applications, betting that a few gems will emerge from the pile. Most companies aren’t blessed with such budgets. One well-written patent application can protect a market position, if it is key to commercial success.
#6 — Do file initial applications provisionally
Filing provisionally enables the consideration of new developments and opportunities, and in deciding whether conditions still warrant filing U.S. and/or foreign applications based on the earlier provisional application.
#7 — Don’t file “cover page” provisional applications
Cost savings of a “quick” provisional may be attractive, but it may not protect your invention if it is later found not to support your claims. This risk is particularly high in foreign countries .Base the decision to file a first application as a provisional, a U.S. utility, or an international PCT application not on cost, but on a substantive protection strategy.
#8 — Do train your inventors to produce thorough, descriptive and relevant invention disclosures
While some patent attorneys quote fixed prices for preparing and filing patent applications, the real cost of doing it right is a function of the amount of time it takes.
#9 — Don’t work with an outside attorney or agent who is unwilling to train your people
An attorney putting your interests first will help you reduce your legal costs, even if it means a smaller fee.
#10 — Do consider hiring an in-house patent administrator
If you find yourself communicating with your outside counsel at least once a week, consider hiring an IP administrator. The cost of such a person will be at least partially offset by the lower bills from your attorney.
#11 — Do conduct a prefiling patentability search
Although it is not legally necessary, such searches will provide valuable information in crafting a patent application directed specifically at what is likely to be considered inventive. The cost of a reasonable search is usually more than offset by the savings in attorney time, and the improved likelihood of a positive examination.
#12 — Do insist that your patent counsel focus on the key aspects of the invention(s)
Identify the invention and craft an application focusing on what is inventive, providing alternate examples of how the invention can be accomplished. If you and your counsel cannot concisely articulate the invention, reconsider whether you should be filing a patent application at all.
#13 — Do make sure your attorney is familiar with efficient filing procedures
It is less expensive to file applications complete, with all necessary attendant paperwork.
#14 — Don’t forget to tailor your claims for each country
If you may later seek foreign protection for your invention, make sure your attorney is familiar with patent practice in the most important foreign jurisdictions. A patent application properly written for protection in the U.S. may be found inadequate to provide protection when extended to Europe.
#15 — Do reevaluate the application and claims just prior to examination
A few years may lapse between filing and examination. Don’t expect the claims originally drafted will still be the best ones to pursue – much can change in the law, prior art, and your objectives.
#16 —Do work with outside counsel who provides electronic reporting options
Electronic document access portals and electronic communication can significantly reduce the fees billed.
#17 — Do hold periodic and regular docket meetings with outside counsel
Addressing several matters at once can significantly lower outside counsel fees, and helps insure nothing “falls between the cracks.”
#18 — Don’t overlook licensing or selling some of your patent portfolio
The current economic climate is causing many companies who would never have dreamed of licensing their IP, to seriously consider doing so.
#19 — Do keep track of your competitors
Be aware of the property rights of your neighbors. The cost of searches for recently-granted patents is nothing compared to the cost of defending against an unexpected charge of patent infringement.
#20 — Don’t forget that patents and trademarks are long-term investments
The term of patent protection is about 20 years from the filing of the application. Those companies positioning themselves for future prosperity are investing in their portfolios now, as keys to their long-term success.
James W. Babineau is an attorney with Fish & Richardson P.C. and is based in Austin and Boston. He can be reached at 512-472-5070.
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