Patent Introductions, Inc. is a company that educates about patents. It was founded by Gregory T. Kavounas, a U.S. patent attorney who has been working for over 20 years both in law firms and in-house operating companies.
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* Why Senior Management Must Take Patenting Responsibility, Intellectual Asset Management, Volume 37, pp. 71-76, September 2009
SUMMARY: The Senior Management of a technical company always wants the high possible returns from its patents. But, as seen in FIGURE A, these high returns may come only:
a) in the long term, long after the company applies for a patent, i.e. not during the present Fiscal Year (FY), and
b) if the company has been expending the appropriate patenting effort during the short term, i.e. during this FY, to obtain patents with some rival preclusion in the future. The patenting effort is appropriate if, in addition to spending money, also manages the right kind of execution in the short term.
In other words, patents are about long term strategy.
To have a chance at the high returns, Senior Managers should first ask and answer the guiding question of why they are patenting. What are their prioritized goals, for the resulting patent portfolio? If Senior Managers do not decide that, then others in the company will, intentionally or by their individual practices.
To help answer the guiding question, a menu of possible goals is presented in FIGURE B, shown in both articles. Each goal is shown as a strategy. By choosing one of the future goals, they are also choosing a patenting strategy for the present.
Second, Senior Managers should execute on all the patenting requirements. If all the execution requirements are not met, the strategy is not implemented, and therefore the future agreed-upon goal from patenting may not materialize. That, even though patenting itself is funded in the present.
Can one predict whether the patent portfolio they are accumulating today will disappoint in the future? Yes! A good discussion can start by assessing the company practices against what FIGURE B lists. Moreover, if Senior Management is aiming for rival preclusion in the future, they can also assess their practices against the default patenting practices described in the subsequent article in IAM:
* How Senior Management Can Execute Strong Patenting, Intellectual Asset Management, Volume 38, pp. 50-66, November 2009
SUMMARY: This article continues with the "how to" of the previous IAM article, for a company that develops new products.
In order to obtain patents that accomplish rival preclusion, an execution plan should include:
a) creating the right culture,
b) applying the patenting levers, and
c) enabling their people to meet them.
This will prevent the occurrence of many adverse dynamics, which the previous article characterizes as "default patenting".
The patenting levers, according to their effect, are:
... to ensure the right inventions are patented: apply Levers L1, L2;
... to ensure the patents will be strong: apply Lever L3;
... if strategy S4 is chosen: also apply Lever L4.
Each lever has components, and is aimed at preventing different instances of default patenting...
* Startup Practice Notes: Optimizing Interacting with Ouside Counsel, Intellectual Property Today, pp. 24-25, May 2007
SUMMARY: Technology startup companies would do well to patent their inventions. This article has suggestions for how such companies could organize their patenting process internally logistically, before they hire an in-house patent attorney.
* The Patentability Search Question: "Do I Search The Prior Art Before Patenting, Or Not?" Initial Considerations, And How They Tend To Answer The Patentability Search Question (White Paper)
SUMMARY: Before investing in the preparing & filing of a patent application, it is sometimes advisable to perform a preliminary patentability search. This White Paper explores the most frequently cited reasons for performing such search, and reasons for not to. Interestingly, many of the latter have become less valid in the new millennium.
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