Licensing technology from other sources makes sense in several situations, even when the licensee does not practice the technology.
Remember that patents are merely business tools, and they are useful when they give your business an advantage over a competitor. Taking a license, even when your company may not currently infringe, may be appropriate in some cases.
Provisional patent applications give the inventor the right to label a product “Patent Pending”, which can have enormous business effects. The mere label of “Patent Pending” can be enough deterrent to keep competitors out of a business arena.
Provisional applications can be obtained with very little disclosure. In theory, a cocktail napkin with a figure and a little description may even suffice.
As much as patent professionals like to harp about the advantages of patents, copyrights, or trademarks, it is also like asking a barber if you need a haircut.
Are you selecting the right things to patent? It is okay to start with the Big Inventive Idea, but look at the business as a whole to select what actually gets protected.
People come to me with inventive concepts that they want to patent. The engineer or inventor in them relishes the “cool factor” that comes from that incredible moment of conception of the concept. My experience is that the excitement and euphoria over the invention is often palatable years afterward. In fact, there are several of my own inventions that to this day bring goosebumps when I think of that very moment when I came up with the concept.
These concepts are often the ones written up in invention disclosures or used by the independent inventor to start a business.
This post is a third of a series of posts describing patent drafting styles. See the others here and here.
When building a patent portfolio with the intent to sell a company, the main audience is not potential infringers, but the acquiring company. Depending on the situation, the acquiring company may have any of several different reasons for the acquisition.
I vary the drafting style of a patent application based on the client’s business needs. Based on the client’s short and long term needs of the patent, the resulting patent may take on significantly different looks.
The best piece of advice I give inventors, both independent inventors and business managers, is to do at least a cursory business plan before seeking a patent. Not only are patents expensive, but they teach your competitors a lot about your strategies, technologies, and plans for the future. There really needs to be a good business case for disclosing your trade secrets before you do so.
Along the lines of the embedded patent attorney concept, I often work with my clients to develop a budget for patent protection, then map a strategy to get the best bang for the buck.
For licensed patent portfolios, a technology may be broken down into two major pieces with some sub-pieces.
After walking the Hardware Show last week and talking to many different people, the conversation often turned to patents and patent strategies when I handed them my business card. I am a sucker for a good inventor-makes-good story, and there were lots of them at the show.
On the whole, I was quite impressed with the basic understanding of almost everybody with regard to patents. Almost everybody understood the basic concept of protecting their intellectual property and the basic business strategies that go along with it.
However, after the basics were covered, many people had some rather fundamental questions, such as misunderstanding a PCT filing, improperly marking their products, and not knowing when and if they should file new patents to cover new ideas.
