Would a patent really be an effective way to protect your IP? Owning a patent might actually work against your interests by disseminating your proprietary information. Enter trade secrets.
Final implementation of the AIA has changed the race track substantially. Companies will have to adjust in order to win the new race to the patent office. ipCG’s cutting-edge ipAIASM services are designed to let our clients dramatically shorten the time between conceiving an invention and filing the patent application. A client company will run—not walk—to the patent office.
For patents specifically, the best IP strategy for China balances the use of both Utility Model and Invention patents. For a comprehensive IP strategy, foreign companies should not just look at the term of protection and assume that Invention patents offer all the protection they need. Companies should use the full range of IP protections including not just patents but also trade secrets and know-how, black boxes, and defensive publications.
If you are like most technology managers, you know you have trade secrets in the organization, but you don't know what they are. You know you have to protect "them" from loss, but what are "they"?
If your R&D department is like most, you have very creative people working diligently to solve problems. However, you may wonder why you don't see more invention disclosures coming from such bright, creative people.
As has been shown, ICM processes are needed to successfully execute the IP strategy. If a company does not have all the processes needed, or needs to improve their processes they typically call upon outside experts in the field to help. This can be very helpful by comparing with best practices in the industry.
The value of any IP is dependent on the context. Valuation of the IP in context and targeted marketing is important to gain returns on the licensing effort.
The protecting phase includes the legal processes for creating a patent application, filing in the appropriate jurisdiction and prosecuting the application through to the grant of the patent.
Organizations that do not use the IP strategy reviewing process generally file patent applications on everything that is deemed patentable coming from the R&D staff. There is no one "minding the store" to ensure that the IP strategy is followed. This is a very expensive way to create a low-value patent portfolio!
Documenting is an important step on the path to successful execution of IP strategy, however inventors are often more interested in solving technical problems and inventing than in documenting their inventions.
Facilitating invention, acquiring technology and IP from outside the company, and inventing around patents are key processes for creating and acquiring IP. Many companies have adopted the best practices of conducting proactive invention extraction sessions and directed invention brainstorming.
All the Intellectual Capital Management (ICM) processes focus on implementing IP strategy. The strategy must clearly articulate what the desired business objective is and how IP supports that.
The first step in implementing IP strategy is to thoroughly evaluate which processes you have that are working well and which processes are absent or are not yielding the desired results. It is important for a company to consider the best practices used by other IP leaders, both inside the company's industry as well as in other industries.
To achieve value effectively, IP-savvy companies have learned to create business-aligned IP strategies. The IP strategy must be integral to the business strategy to create maximum value.
The newly published USPTO 2010-2015 Strategic Plan is the first strategic document from the USPTO that demonstrates that someone who has used IP as a global business asset is in charge! No wonder, as the new Director of the USPTO, David Kappos, comes with 20 years of experience managing IP at IBM.
Whether a company uses its IP offensively or defensively, a company's investment in IP strategy can be implemented cost-effectively in both the short and long term. Four practices to consider are: an IP portfolio audit, strategic foreign filings, defensive publications, and strategic portfolio development.
There is a lot in the news about IP piracy and counterfeiting in China. This may cause you to be indecisive about whether or not it is important to file patents there. It is also very clear from the numerous analytics work we have done in almost every industry that only a handful of companies have a clear filing strategy. Many of our clients ask us what they should do.
In a recent article, "Is the recession suffocating American Innovation?," Deb Riechmann of the Associated Press describes some trends that may be negatively impacting the success of innovation in the US. There has been a decline in the new patent applications at the US Patent and Trademark Office because some companies...