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Patent Procurement & Management

This section of the SLW Institute discusses the guidelines for patent procurement and administration. The protection from copying of an invention by competitors can be an important, if not crucial competitive advantage. As a result, all opportunities for patenting technology should be preserved until considered, both for protection in the United States and internationally.

Patent Procurement Topics

Product Launch Invention Review
Documentation of Inventions
Unauthorized Disclosure of Inventions
Invention Disclosure
Processing Invention Disclosure
Review Invention Disclosure
Instruct Outside Patent Counsel
File Patent Applications
Prosecution & Issuance Procedures
Foreign Filing Decisions & Procedures
Maintenance Fees

IP Management Topics

Responsibilities of the Patent Coordinator
Portfolio Management Database
Patent Marking
Status Reports
IP Portal
Inventor Recognition

Patent Procurement

Product Launch Invention Review

Prior to the launch or public disclosure of a new product, the product should be “scrubbed” to determine if it contains any inventions that have not yet been disclosed, and to make sure that all patents desirable for the product have been filed before the public disclosure.

This checklist provides recomendations for reviewing your invention before the launch of the product.

Documentation of Inventions

The documentation of inventions establishes the originality of its ideas and assists in filing for and obtaining patent protection.

Other than the special circumstances described in the guidelines of this section, routine documentation of inventions and ideas may take the form of design or software documentation and materials generated in the course of product R&D. Inventions and ideas can be documented using invention disclosure forms for submission to a patent manager/committee for their consideration.

These guidelines provide tips on how to keep a well-kept lab notebook.

Invention Disclosure Form to be submitted prior to filing a patent application.

Unauthorized Disclosure of Inventions

Product development personnel should avoid disclosure of an invention prior to filing a patent application for that invention in the US and/or a foreign jurisdiction, or before obtaining approval for such a disclosure from an authorized supervisor that fully understands the implications. Such care will help preserve a company’s ability to fully protect the invention in the US and other jurisdictions.

Disclosure prior to filing a patent application may destroy the company’s ability to patent the invention. Whenever possible, any disclosure prior to filing a patent application should be made under the protection of a nondisclosure agreement.

Additional information can be found in the Protecting and Handling of Confidential Information section of the SLW Institute.

Invention Disclosure

If you’re properly prepared for your invention disclosure meeting with your patent attorney, the patent application drafting process should take six to eight weeks. But if you’re not prepared, the application process could stretch for months, even a year. Not only that, an inventive feature could be missed which could compromise the strength of your patent.

Your time is valuable. So invest a few minutes to prepare for this meeting to save you hours down the road.

There are four simple steps to prepare:

1)  Take a few moments to ponder this question: How is your invention unique? What is the inventive concept? Think about it and write down the answer in a sentence or two.

2)  Answer this question: What’s the closest thing on the market related to your invention? If you don’t know of anything, that’s fine. But if you do, bring that information to your meeting.

3)  Look at your internal disclosure form. Has your invention changed any since the disclosure form was initially completed? If it has, let us know how. Also, are there any other materials such as requirement or product description documents that are not listed on the form? If there are, send those to your patent attorney prior to the meeting.

4) If your invention is specific to software, does your invention use any third party software or devices? List these as well.

If you follow these four simple steps, you’ll have a successful disclosure meeting with your patent attorney.

Processing Invention Disclosure

A patent coordinator can make invention disclosure forms available to inventors. The coordinator can also receive, promptly log, and retain copies of all invention disclosures. It is recomended that the logged disclosures be reported to the patent manager within two weeks of receipt.

Prior to a patent committee meeting, the patent coordinator can distribute materials relating to each invention disclosure.

Review Invention Disclosure

The patent manager and/or the patent committee can be primarily responsible for the review and evaluation of invention disclosures.

The patent manager can take immediate, unilateral action on disclosures that so require, identify those that should be rejected out of hand, and those that should be deferred for consideration by the patent committee.

The patent committee is recomended to meet no less than on a quarterly basis to review candidate technologies. The patent manager and/or patent committee can review and evaluate the various invention disclosures, and action each disclosure as a patent application (utility or provisional), a defensive publication, a trade secret, or to be held over for later consideration. These decisions can consider the following criteria with respect to each invention disclosure:

  • The degree of novelty (or “newness”) and level of inventiveness (or non-obviousness) of the invention.
  • The technical merit of the disclosure.
  • The strategic importance of the relevant technology from a business perspective.
  • The detectability of infringement of an eventual patent by a competing product.

Outside IP counsel can be requested to attend the patent committee meetings. Such attendance can be beneficial in that Outside IP Counsel can have an insight into the value of the relevant technology concepts, can benefit from discussions regarding such concepts by the Patent Committee, and will be in a position to assist in the decision making process.

At the meeting, each invention disclosure can be presented and potentially include a problem statement, a technical overview, and the advantages of the invention.

The patent coordinator can document each of the decisions and also document any action items arising with respect to invention disclosures.

The patent coordinator can distribute: (1) a summary of decisions by the Patent Committee, and (2) a summary of action items and associated due dates to be completed.

General overview of the four basic instrumanents for protecting IP

Instruct Outside Patent Counsel

Following a patent committee meeting, the patent coordinator can be responsible for issuing instructions to outside IP counsel, subject to approval of the estimates of cost regarding the ideas actioned.

Instructions with respect to an invention disclosure could relate to one of the following:

  • Preparation of a provisional patent application
  • Preparation of a utility patent application
  • Preparation of a defensive publication

Instructions to outside IP counsel to file a provisional patent application and/or a defensive publication are simpler and the costs involved can be less than a utility patent application.

The patent coordinator can obtain estimates for the costs of any desired action and obtain approval from the patent budget owner before giving final approval to the outside IP counsel.

File Patent Application

Unless otherwise instructed, the Outside IP Counsel can perform a patentability assessment prior to drafting an application. Where the prior art is sufficiently similar to the proposed invention so as to raise patentability questions, the Outside IP Counsel can consult with the Patent Manager regarding whether or not to proceed with the proposed patent application. If the Outside IP Counsel proceeds with preparation of an application, it is recommended that they conduct a disclosure meeting (or inventor interview) to fully probe the inventors regarding the novel features of the invention.

Prosecution & Issuance Procedures

The patent coordinator typically receives all reporting letters from the outside IP counsel concerning the continued prosecution of patents and patent applications. The patent coordinator can also work with the patent manager to provide instructions to the outside IP counsel.

Foreign Filing Decisions & Procedures

Typically at the beginning of each quarter, it’s recomended that the patent coordinator consult with the patent manager and obtain input as needed from outside IP counsel, to formulate decisions regarding:

  • The filing of a PCT or national stage application within the 1 year deadline from the filing of any priority US applications.
  • The filing of Chapter II demands (requests for examination) in the PCT process.
  • Decisions regarding National and Regional Phase filings based on PCT applications.

Maintenance Fees

Outside IP counsel is to automatically attend to the payment of all maintenance fees, unless instructed by the company not to attend to such payments. Outside IP counsel is nonetheless to provide reminders to the company regarding the payment of maintenance fees.

IP Management

Responsibilities of the Patent Coordinator

The responsibilities of the patent coordinator can include:

  • Liaison with the outside IP counsel regarding administrative matters.
  • Presenting substantive incidents to the patent manager for decision and response.
  • Tracking deadlines with respect to the patent procurement program.
  • Coordinating internal and external events (e.g., meetings and presentations) pertaining to the patent process.
  • Taking the minutes at patent committee meetings, documenting action items arising from these meetings, and following up on the action items.
  • Administering any patent incentive program
  • Administering any patent recognition program
  • Coordinating decisions on payment of patent annuity or maintenance fees
  • Assuring the maintenance of the portfolio management database
  • Foreign filing decisions
  • Maintenance decisions
  • Review invention disclosures

Portfolio Management Database

In order to facilitate the efficient acquisition and use of a company’s patents, the company can have a portfolio management database maintained by outside IP counsel. The database can allow authorized personnel to obtain up-to-date information on the company’s patents and the technologies and products that they protect in each jurisdiction.

The patent coordinator can be responsible for assuring that this database is regularly updated and maintained by the outside IP counsel. In general, the database should be updated with each status change in each patent asset, and not less than annually in regards to correlating patent assets to products and technologies. For further information, see the guidelines provided in this section.

These guidelines provide tips on how a patent portfiolo can be organized.

Patent Marking

The patent coordinator can be responsible for assuring that company products include appropriate patent marking. The requirements for marking are set forth in the guidelines of this section.

These guidelines will provide information on the fundamentals of patent marking.

Status Reports

Outside IP counsel can provide status reports regarding all matters being handled for the company to the patent coordinator on a quarterly basis.

IP Portal

An IP Portal can be made accessible to employees, including basic educational information regarding IP, as well as tools including the invention disclosure form and submission procedure to facilitate a patent procurement program.

Inventor Recognition

Inventor recognition is important and can be encouraged at various levels of the company. Recognition may be provided in various ways, at the discretion of a business segment or manager. Where required by local law to remunerate the inventor(s) or perfect ownership of the invention by the company, appropriate awards can be provided.

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