In a related paper on this web site (Six Steps to Marketing Success), six important steps to marketing success are discussed.
There is a seventh step, and that step is making sure the company has an adequate intellectual property plan. Even with excellent implementation of a good product development and marketing plan, commercial success can be stalled by a superior patent position held by a competitor.
The Seventh Step: Have an appropriate intellectual property plan
This paper is not a substitute for legal advise, but it is offered as business advice.
As an industry matures, intellectual property in the form of patents is accumulated by competitors, and it is essential that a business develop an intellectual property (IP) plan that is appropriate for the situation.
Patents grant the owner exclusive rights to the IP described in the Claims section of patents for periods of up to 20 years from issue date. Patents are granted in individual countries, and the rules in each country differ. It is essential that you understand the rules regarding disclosure of concepts in the various countries where you intend to file patents. Otherwise, early disclosure may prevent you from obtaining valid patents. Disclosure can be "an offer for sale" which may mean a presentation, an advertisement, or a quote. Disclosure can also be information made generally available in the public domain, such as a paper or technical note. Reviewing your plans with a patent attorney is an essential part of and IP plan.
IP plans have three parts:
An IP plan for defense
An IP plan for offense
An on-going IP plan
IP plan for defense
The purpose of an IP plan for defense is to make sure that a competitor cannot attack your product with their patents.
A prior art review and a patent infringement review are essential parts of an IP plan. If a prior art review indicates that there are patents that make claims somewhat similar to your product, it is essential that you have a written legal opinion regarding non-infringement. Otherwise, your company may be liable for triple damages if you are judged to have willfully infringed in a later patent infringement suit.
In a patent filed for defensive purposes, the goal is to have claims that prevent others from attacking you with their patents. Another defensive technique is to disclose the idea publicly to prevent someone else from filing a patent making such claims as you disclosed. It is usually a good idea to disclose that you have patents or patents pending when discussing your product. The disclosure adds a bit to your differentiation plan, and it may discourage others from using the same technology. Obviously, good legal advice is essential.
IP plan for offense
The purpose of an IP plan for offense is to prevent your competitors from practicing the claims of your patents in their products and to be paid if they are judged to have infringed your patents.
An IP plan for offense requires good patent positions, strong legal advice, and the financial ability to wage a legal battle. Be sure your company understands the situation before committing to an IP plan for offense.
On-going IP Plan
If you have patents that stake out significant areas of technology, it is good practice to extend these patents through related patents and continuations-in-part. The advantage of this practice is that a wider range of protection is created over time as the original patents expire.
Patent planning is not something that should be left to chance. Successful companies name a patent person or committee, have a well-thought-out patent policy and plan, have good legal representation, and implement on a regular basis.