Effective Patenting - A Business Perspective (Part 1 of 2)

Introduction

The first step in considering patent protection has nothing to do with patents, or the law.  Instead, it involves a thorough analysis of your business and a determination of what your goals are.  There are probably very few decisions that are made in business that don’t involve a cost-benefit analysis; obtaining a patent is no different.  Patents are assets for your business that could pay huge dividends if properly orchestrated.

There are many reasons why businesses want patents, ranging from protection of core technologies to ownership for use as a marketing tool.  Odds are that your goals are a hybrid of those two aims.  Analyzing your business and determining your direction will often result in an intelligent and effective approach to building a patent portfolio resulting in a true and viable long-term asset.

What Are Your Objectives for Obtaining Patents?

First of all, patents are assets.  Almost everyone involved in Intellectual Property law says this and believes this.  But, what does it mean?

From a purely legal perspective, a patent grants you a number of rights.  Mainly, these rights allow you to exclude others from making, selling, using, or importing whatever you have patented. In order for an asset to make business sense, however, you have to decide how best to use it.

Some key objectives are:

  • Excluding Competition – The most obvious method of utilizing a patent is to stop your competitors from making use of the technology.  If a patent can give you a competitive advantage in today’s cutthroat marketplace, it makes solid business sense to be the only player in the market that can use it.  You can have a monopoly on your invention for 20 years from your application date.
  • Marketing Tool – Selling a product or service that is patented adds to the perceived value of the product or service.  It indicates to a customer that you are unique, new, and better than the competition.
  • Revenue Streams – Patents also allow you to collect licensing fees from other companies.  You can provide all or some of your rights to another for a fee or a royalty.  This may allow you entry into markets that are otherwise closed to you.

While your typical business objective will most likely be a combination of these and other considerations, deciding what is most important to your business can help determine strategies to move forward.

Types of Patents:

  • Utility – Typically, when anyone refers to a patent, they are referring to a utility patent.  This is what contains what you claim as your invention, and determines what subject matter is protected.
  • Design – A design patent is purely to protect the appearance, or decorative aspects of a product.
  • Provisional – A provisional patent can essentially be viewed as a placeholder for your patent application.  You have to disclose all the information necessary to implement your idea, but do not have to claim your specific invention.  You have 1 year from the filing of your provisional patent to either convert it to a utility application, or file a new utility application.

Effectively Meeting Your Objectives

Meeting your objectives requires significant planning and preparation before ever writing the patent application. Your objectives will dictate both how the patent application is drafted, as well as how the patent application is prosecuted after application.

At Rao DeBoer Osterrieder, our goal is to help you understand these complex aspects as they apply to your business.  If you have questions on how you can best protect your business we welcome you to contact us.

We look forward to speaking with you!

[Part 2 to follow shortly!]

© 2017 Dileep Rao  

Dileep Rao is a registered patent attorney, and admitted with the Texas State Bar.  He is a Partner with Rao DeBoer Osterrieder, a law firm in Houston, Texas specializing in intellectual property law. Contact Dileep via Email.

The views expressed in this article are those of the author and do not reflect the views of Rao DeBoer Osterrieder, PLLC, or any of its clients. All rights reserved.