Patent Law

The use of patent committees to evaluate inventions

By Lawrence B. Ebert, Esq.

Your patent budget ? whether large or small ? can no longer fund every new discovery by your research and development teams. The demand for research or patent managers to efficiently utilize the budget is high. Therefore, it's important to thoughtfully review the inventions, tie them together where available, and determine early in the process where you want that patent to fit within your portfolio in the long-term (more than five years). A patent committee that meets regularly is useful, where the committee includes key inventors, research managers and patent professionals. Effective patent committees discuss how new inventions are tied to prior research and patent families, how innovations can be logically grouped together in patent applications, and what additional information is needed from R&D teams to get a complete patent application on file.

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Is the technology the foundation of a larger platform for the company or a "One-hit wonder." If it's the former, then filing a broad patent application followed by a series of continuation applications and defensive publications may be the ideal strategy to lock down a field of research before competitors surface. If the application is designed to protect an invention that isn't related to other company technologies (the "One-hit wonder"), then your patent budget may be better spent by keeping the information a trade secret or releasing it as a defensive publication.

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Companies that base their bottom line on innovation lose money every year by not educating research and sales teams on the patent basics, including inventorship, documentation and the implications of public disclosures of inventions.

--> IPBiz would not treat "innovation" as a synonym for "invention."
--> IPBiz would file an application on the "one-hit wonder," and never as a defensive publication.

Full post as published by IPBiz on July 09, 2008 (boomark / email).