Many of the common pitfalls in the defense and enforcement of patent rights can be avoided through careful planning and early consultation with competent patent counsel. Although we assess the needs of each client individually, we find that the following practice pointers are applicable to most companies or individuals who create patentable inventions.
- “File early. File often.” Securing as early a filing date as possible might be critical in getting a patent and in preventing the competition from gaining a patent instead of you. Filing additional applications on variations of and developments on the original conception can result in broader and more robust patent protection.
- Set up a patent committee including heads of marketing, business development, engineering, and in-house legal department to work with patent counsel to develop a patent strategy that is implemented on a company-wide basis to advance your company’s business.
- To protect your investment in research and marketing, consider developing a multi-pronged approach to protecting your intellectual property, incorporating utility patents, design patents, copyrights, trademarks and/or trade secrets. Since there are differences between patents and other types of intellectual property, protecting all of one’s rights in a product line can be very valuable.
- Have written agreements signed by any employee or third party who may be inventing on your behalf. Otherwise, it may not be clear who owns the patent.
- Educate your co-inventors and employees as to why patents are important. Emphasize the importance of early and adequate documentation of developments, which should be considered promptly by a patent attorney or by the patent committee for possible patenting.
- Have searches performed to determine the novelty and the non-obviousness of inventions. In many industries, it is also prudent to learn of patents that may cover your product.
- Consult with a patent attorney early in the development process. A patent application may be filed before a prototype is built, and it is often prudent to file a patent application as quickly as possible.
- Use provisional patent applications to establish an early filing date.
- Communicate regularly with patent counsel to ensure prompt, quality filings. Effective March 16, 2013, the America Invents Act (AIA) changes the United States from a first-to-invent system to a first-inventor-to-file system. Thus, early filing dates are even more important than before.
- Watch for possible statutory bars to filing patent applications. Effective March 16, 2013, the AIA dramatically narrows the one-year grace period for filing patent applications in the United States, and most foreign countries have no grace period at all. The AIA also magnifies the prior art effect of foreign patent applications and other foreign activity. For this reason too, early filing dates are important.
- Consult with a patent attorney about obtaining a formal, comprehensive clearance opinion if a patent belonging to another presents a possible problem.
- In order to maximize your recovery in a patent infringement suit, make sure that you and your licensees are properly marking the patented products.
If you have any questions about patent defense and enforcement, contact a member of our Patent Practice Group.