ARTICLES

Missing the Boat on IP Protection

I run across many start-up companies that come to me at the eleventh hour seeking to obtain patent protection for their technology. The usual scenario is that a company makes some sort of public disclosure without knowing under US Patent law, certain types of public disclosures, such as trade shows, public demonstrations, publication of white papers, etc., can trigger a one year clock to get a patent application on file at the USPTO. Although the US is quite generous with its one year grace period, most other countries require that a patent application is on file prior to such a public disclosure.

“… trade shows, public demonstrations, publication of white papers, etc., can trigger a one year clock to get a patent application on file at the USPTO.”

In other words, while a company may still being able to file for a patent in the United Sates within one year of the public disclosure, in most other countries such a disclosure may bar the protection of foreign patent rights. Unfortunately, in today’s global economy, this could be the difference between success and failure for many companies.

“… a company may still being able to file for a patent in the United Sates within one year of the public disclosure …”

One reason many companies may miss the boat on IP protection is that in their rush to capitalize on their innovations, they may often fail to consider global IP protection. To make matters more complicated, IP protection can come in various forms, from trade secret protection, to copyright and trademark protection, to patent protection, to licensing, to name just a few. Furthermore, on top of their own IP protection, companies must step on the IP rights of their competitors. For any company, knowing their competitors’ IP rights of may be as important as protecting their own.

“… companies must step on the IP rights of their competitors. For any company, knowing their competitors’ IP rights of may be as important as protecting their own.”

Thus, it is not surprising that the global protection of IP rights is not cheap. So what can companies do to protect their technologies and navigate a costly, complex, and often unfriendly IP landscape? For starters, companies should evaluate the importance of their IP, and make IP management, assessment, and protection a central part of their business plan and a necessary cost of doing business. After all, their competitors surely will.

“… it is not surprising that the global protection of IP rights is not cheap.”

Moreover, companies should work with a competent patent attorney who understands their business and technology, can help them navigate the IP landscape, and can help them protect their IP assets nationally and globally. A factor to consider in this respect is the cost effectiveness the patent attorney provides. After all, it’s no secret that the most expensive piece of IP protection puzzle is usually the patent attorney. Therefore, it is important, particularly for start-up companies, to find a patent attorney that takes the time to understand the company’s technology, revenue model, and work processes to make sure that an IP strategy is executed in a focused and efficient manner.

“… it is important … to find a patent attorney that takes the time to understand the company’s technology … to make sure that an IP strategy is executed in a focused and efficient manner.”

Villamar, “Missing the boat on IP protection,” Tech Valley Times, Issue 34 (February 2006, pdf format)

*This article is provided by the author with the understanding that it does not constitute the rendering of legal advice or other professional advice by The Villamar Firm PLLC or its attorneys.