The quality of a patent begins to take shape at the time of disclosure. An inadequate disclosure can greatly affect the quality of the patent. The level of sophistication of a client typically dictates the quality of patent disclosures. However, as detailed herein, both beginners and advanced players in the patent space need to identify ways to improve the disclosure process. Some of the improvements can be helped by an experienced patent attorney, but many of the recommendations below are easily implemented internally. While the specific items relate to patents, similar issues exist for other areas of IP, including trademarks. Working with an experienced IP attorney will assist in improving IP practices and maximizing IP protection.
I. New Players to Patent Protection
Beginner practitioners and early-stage companies often need to establish a base level of uniformity and understanding of the patent process. The items below highlight baseline competencies needed to provide adequate IP protection without wasting time or money.
- Understanding your company’s goals relating to patent protection: The biggest hurdle to getting patent protection is understanding the reason for obtaining the protection. Companies have different reasons for obtaining patent protection. Patent protection may provide offensive protection (e.g. protection against competitors copying an invention) and/or defensive protection (e.g., provide protection against competitors threatening to sue for patent infringement). Goals relating to patent protection should also be viewed through the scope of all IP. For example, understanding how trademarks, trade secrets, and copyrights fit with patent protection allow for robust IP protection. An experienced IP attorney can help you understand the reasons for obtaining IP protection and the most important areas of protection for your specific company.
- Having standard patent disclosure documents (and actually using them): Most patent practitioners will be able to provide a generic invention disclosure document that will help identify information relating to the invention, such as current state of the art, novel aspects of the invention, detailed description of the invention, inventors, whether the invention had been publicly disclosed, and date of invention. However, companies new to the patent space should also work with their patent attorney on ways to customize the invention disclosure documents specifically for the company's goals. Additionally, getting inventors to complete the invention disclosure documents is more important than merely having the invention disclosure documents.
- Knowing what to bring to the patent attorney: Patents are not cheap and most of that cost is due to attorney fees for drafting the patent application. However, the cost is also something that can be affected by the client. Namely, a client that understands the process and provides a patent attorney with the proper disclosures can improve the efficiency of the drafting process. The materials that will assist the drafting process the most may be dependent on the patent attorney. Do not hesitate to ask your patent attorney for the specific materials requested. Providing the appropriate information helps efficiency and overall quality of a patent application.
There are other issues that new players to the patent space also have to encounter. For example, employment agreements need to have specific patent and other IP assignment language to provide protections. The Maynard Nexsen IP team is consistently assisting companies prepare for growth, while protecting existing IP.
II. Advanced Steps for Improving Patent Protection
Even seasoned veterans of the tech space need to periodically review operations to ensure maximum reward on an IP portfolio. Below are just a few examples of ways to improve patent practices within a company.
- Tailoring disclosure documents to the industry: Understanding the state of the art, common pitfalls during prosecution, and drafting strategies for different industries improves the patent portfolio for a company. Tailoring disclosure documents to the industry and/or specifically to the company can be a game changer for a patent portfolio. An experienced patent attorney can help greatly in improving disclosure documents based on the industry.
- Identifying strengths and weaknesses in current practices: Companies evolve and the effort to ensure patent protection must also evolve with the company. Over time, a well-tailored patent program may be quietly derailed. For example, repeat inventors may retire or leave the company, and the company has not conducted the proper outreach to empower new repeat inventors. Understanding the strengths and weaknesses of current practice is important for improving a patent portfolio. Experienced patent attorneys can help identify strengths and weaknesses of current practices, as well as provide recommendations for improving practices.
- Finding ways to encourage more patent disclosures: Just as identifying strengths and weaknesses with current practices is important, identifying ways to connect with past, present, and future inventors is also important. Most companies use at least one of invention disclosure submissions or ideation sessions to generate disclosures for patent applications. The number and quality of disclosure submissions may be used to identify talented inventors and identify areas needing improvement. Additionally, connections may be made through ideation sessions that include potential inventors discussing ideas. The best way to improve a patent portfolio is maximizing inventor talent and identifying improvement areas. An experienced patent attorney can help do one or both of those things.
III. Final Considerations
Whether you’re a start-up founder or an in-house attorney for a Fortune 500 company, the Maynard Nexsen IP team is happy to provide concise and effective ways to improve your patent disclosures and set your company and inventors up for success. We assist clients with varying sizes of patent portfolios, ranging from companies filing a first patent application to companies with large patent portfolios. We also assist clients with non-patent IP matters, providing a one-stop shop for patents, trademarks, and copyrights.
