Protecting your IP assets does require a degree of perseverance. The process will inevitably throw up surprises and sometimes disappointments – for example, a patent examiner may identify extremely relevant prior art that casts doubt on the novelty of some key feature. Assuming you have faith in the products and services that you are developing, you should stick with the strategy, albeit perhaps tweaking the objectives. Having said that, flexibility is important. If it transpires that some key feature cannot be protected, divert the allocated budget element to protecting some other feature that provides a commercial advantage.
It is important to keep up the momentum. Many companies back off from seeking IP protection after they have filed applications, or obtained patents for the features seen as key at the outset and which provide the foundations for the company. These applications may fail down the line and it is important to file applications for the secondary features to provide additional strength to the portfolio and as an insurance policy.
It is very common for companies to fail to identify important assets prior to them being disclosed. Such a disclosure will likely make it difficult or impossible to subsequently obtain valid patent protection. Disclosures, either by publication in writing or on the web, by showing or selling a product or service in the absence of an NDA or confidentiality agreement should always be preceded by an internal review to assess the merits of seeking protection and, if necessary, filing appropriate applications. This needs not only regular reviews, but also an awareness on the part of all employees of the company’s strategy and the rules around IP protection.
We have talked about the importance of having a resilient IP strategy. If the strategy is not resilient, problems will arise. For example, the member of staff responsible for IP may move on. For a small company this will be especially problematic as it may be difficult to quickly replace them. A strong relationship with your external IP adviser will be critical. The adviser needs to be aware of the company’s IP strategy and objectives, and should be able to act proactively and sometimes independently. The adviser will be key in transitioning responsibilities to the replacement internal resource.
Companies are often not sufficiently ambitious when it comes to protecting their IP assets, taking the view that what they are doing is not that clever or sufficiently distinguished over what is already known. More often than not, a novel feature or application that provides some commercial advantage will be patentable. Obtaining patent protection for such features adds another layer to your IP protection and to the company’s value.
They can take the view that something that they are working on is at too early a stage, or is too conceptual to provide the basis for a patent. Whilst patent laws do have a requirement for the applicant to provide an enabling disclosure, that is to provide the skilled person with information sufficient to allow the skilled person to actually implement the invention, such details are often easy to provide prior to your having a working prototype in hand. As a rule, the earlier that you file for a patent, the broader the protection you are likely to obtain.
Perhaps the most critical pitfall en route to achieving your objectives is the possibility that you run out of cash or hit cash flow problems. Unfortunately, the processes for seeking to register IP can be unforgiving – there are deadlines that have to be met and that have associated costs. Careful cost forecasting and budgeting is key. This must include some contingency to cover unexpected events, e.g. difficulties in overcoming Examiners’ objections and the filing of applications for unexpected features. IP costs will almost always be more than you optimistically hope for at the outset.
Often, the cooperation of staff is important when it comes to seeking to register IP. The signatures of inventors and designers, directors and owners, are often required on legal documents. Failing to obtain these can be painful and costly, and sometimes fatal. These are best obtained when everyone is happy and cooperating, usually at the earliest possible stage. So try to ensure that all important agreements are in place as soon as possible. In the event that signatures are required at a later stage, look to obtain these before staff depart or make sure that there is an understanding that staff will be reachable and happy to cooperate following their departure.