Thursday, January 12, 2006

Patent Process

Excerpts from Scott Maxwells Blog

My takeaways (filtering out all of the patent law issues and all of the traps and opportunities that good patent lawyers can tell you about):

David recommended two basic patent strategy points:

Develop a strategy for pursuing patent protection. What are the core technologies that you wish to protect and why? Revisit this strategy periodically.
Develop a strategy for pursuing foreign patent protection. There are a lot of countries (read more costs!). Where are your major competitors and where is your customer base. Revisit this strategy periodically.
I particularly liked several of David’s very practical steps for managing the day-to-day patent process:

Give incentives for each member of the development staff to submit short “invention disclosures” that describe the problem, the solution, and why the solution is novel. David suggested $25 or a dinner out for each disclosure. (I have also heard of larger companies having a quota for disclosures as well as patents…not sure which is best.)
Set up an IP group to review the invention disclosures periodically and decide which to move forward with. David pointed out that it will probably be budget that sets the bar for the number of disclosures to move forward with (assuming innovation in the company and an incentive to create the invention disclosures).
Do not bother reviewing third party patents (it will take too much resource and you won’t necessarily get to a meaningful answer).
Contact a good patent attorney to prosecute the patent application (Wong Cabello comes highly recommended).
A basic patent will cost about $8-10k if done regularly and if you build a relationship with the right firm.


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