Not sure where to proceed with your IP strategy? In my experience most companies either seek patents too aggressively or without a clear strategic vision for growth. We can work together to go through your current intellectual property portfolio and research and development pipeline to ascertain the most valuable opportunities.
The Benefits of Patent Consultation
Deciding what patents you should file next is an extremely complicated matter. While some inventions can be clear cut catalysts to seek a patent, there are often existing opportunities in your patent portfolio or strategic reasons that an engineering team wouldn’t consider. Additionally, a thorough patent consultation, or concentrated portfolio analysis, may reveal some obvious opportunities for patent assertion in lieu of additional technological development.
I routinely work with clients to determine the best inventions in their research pipeline to patent. Below are a few common instances that may affect how IP budgets should be allocated. It’s important to have a broad perspective as you develop your company’s intellectual property portfolio and make sure that you’re properly prioritizing the uses of budget that will maximize your company revenue and secure a strategic advantage.
Considerations When Deciding What to Patent Next
Responding or Avoiding Patent Thickets: Patent thickets are a natural part of any industry’s evolution; as companies seek to commercialize a certain technological area an interconnected and arguably overlapping set of patent rights quickly develop. Companies need to be savvy about where they monetize, or else they may find themselves having to hack through a patent thicket, or minefield of existing patent rights before they can actually monetize their inventions. While patent thickets present interesting problems, they’re often avoidable, or can be circumvented under proper conditions.
Avoiding Blocking Patents: Blocking patents are patents that can prevent your inventions from being fully monetized if they rely on technology covered in competing patents. Ideally you’re not at a place where you’ve been forced into patent litigation or a licensing agreement. But even if so, we can work together to determine the most profitable way to proceed, by designing around blocking patents or generating the leverage on competitors to make sure it doesn’t happen again.
Current Patent Law Landscape First to File World: Back in 2011 the America Invents Act pushed US patent law towards a “first to file” standard. Whereas the US Patent and Trademark Office used to grant patents to the first company or individual to invent a product, it now grants them to the first person or company to file a patent and enable that invention. For the average company or solo inventor this means that the question of when to actually file a patent has become a time sensitive matter.
Achieving Strategic Dominance in an Industry: Viewed with a strategic lens, your patent portfolio could be turned into a strategic asset for powering growth in your own industry. Making sure that your product research is protected from interference from competitors is as important as making sure that you’re not entangling yourself in patent thickets.
Choosing between Trade Secrets and Patents: The fact is that patenting any invention involves sufficiency of disclosure, or enablement. If the invention cannot be faithfully reproduced by someone skilled in that field then the US government won’t grant you a monopoly to commercialize it. That said, this public disclosure may empower competitors to design around your product, or supersede it. I can help you determine instances where it would be strategically more beneficial not to patent an invention.
There is no doubt that the technology landscape is progressing at a rapid clip, and unfortunately this makes the IP landscape increasingly challenging. I offer consulting services specifically so that companies can determine the best inventions available to them for patenting and formulate a clear vision for how they want to develop their IP portfolio. The best case scenario is that making a mistake in constructing competing claims can cost you delays and further investment, but at worse a patent misstep can land your company in court and add years to product commercialization.
I can take you from inspiration to patent application filing and patent grant.
I can work with you to bring patent infringement suits against infringers.
I defend parties from patent infringement suits and declaratory judgement actions.
Determine patentable inventions in your current innovation pipeline.
Patent Portfolio Analysis
Identify valuable patents in your current patent portfolio.
Trademarks to ensure your brand and company are protected as yo grow.