Hope Is Not A Plan

Does this sound familiar? “The Board meeting is tomorrow and I hope they don’t grill me on the IP!”

A wise friend of mine once told me, “Hope is not a plan.” This is especially true when it comes to IP protection for your product and business. Having a real IP plan, instead of hoping that all of those applications you’ve been filing will stop infringers, is fundamental to your business. And it’s well within your grasp.

The Invention – Patent Cycle

In most companies, scientists or engineers invent something and send an invention disclosure to the patent attorney. An application is filed and the cycle repeats itself. The result is a sizable patent portfolio but not necessarily the best protection for your product.

Do I Need to Patent That?

Begin with your product requirements document (PRD). It describes the features and specifications that define your product. You will be counting on these features to set you apart from the competition. You should be sure that as many as possible are covered by your patents.

Examine each item carefully. Ask yourself, “How are we going to achieve this?” The answers will lead to an outline of potential patent claims to protect those key elements. Compare the outline to your existing portfolio. Are these claims present in existing applications? Will you need to file more applications?

If you are in the early stages of product development, you probably don’t have solutions to all of the requirements in your PRD. Presumably you have a development timeline leading to the solutions. Add IP milestones to the development timeline.

Examine the PRD again. Ask yourself, “How might our competitors achieve these or equivalent features and specifications?” The answers will help define the defensive elements of your portfolio. You should identify what additional data may be required to support defensive claims and, if possible, build the measurements into your development timeline. While IP does not drive R&D activities, it is certainly easier to gather a little additional information along the way than it is to back track later on.

Build a Timeline

Well, actually two timelines: one for when you plan to file additional applications, and the second for when they will expire.

The timeline for filing applications becomes part of your development timeline and needs to be carefully reviewed as shifts occur in development. Revisit this timeline frequently in project planning meetings.

The second timeline addresses loss of exclusivity. For many products, the length of exclusivity will be a key factor in recovering your investment in development. This is especially true in the life sciences sectors. For products with shorter lifecycles, exclusivity is still important, but mostly for the core technologies, and perhaps less so for ancillary features.

Finally, overlay the patent expiration data you have been gathering for your competitors’ products. You will gain an appreciation for how you will measure up against them later in the lifecycle of your product.

How Much Is This Going To Cost?

I have yet to meet a company with a budget large enough to patent everything they see as potentially important. Nevertheless, the above exercise will allow you to make intelligent decisions to prioritize the applications you file and the expenditures you make. And, just maybe, you won’t feel grilled by the board.

Need help with your IP Plan?   Contact me.

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