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If patents are part of your IP strategy, focus your patent budget on inventions that your development team believes will be technically achievable, that patent counsel tells you appear on preliminary review likely to be patentable, and that you believe will be commercially well received by the marketplace.

Suggested Readings

Founders School || Intellectual Property || Patents || Impact Guide (PDF).

American Bar Association: What is a Patent? Third Edition, 2010

Field, Thomas G., Jr. IP Basics: Seeking Cost-Effective Patents

McDermott, Peter. Will the Real Inventor Please Stand Up? (PDF)

Lecture Clarification: Public disclosure by an inventor does not immediately render the invention unpatentable under the so called “absolute novelty” rules that came into effect in the United States in 2013. The inventor has a 1-year grace period from the date of such public disclosure in which to file a US patent application. Any disclosure of the same invention by another person during that grace period will not qualify as “prior art” and, so, will not render the invention unpatentable. Conversely, if the inventor does not publicly disclose his invention prior to filing a patent application, there is no grace period and any public disclosure by another prior to the inventor’s patent application filing date will qualify as prior art potentially barring patentability. So, filing a patent application as soon as possible and preferably before any public disclosure by the inventor is the best course of action.

The United States Patent & Trademark Office has materials, links and information, including answers to frequently asked questions regarding patents and the process of applying for patent protection.

The European Patent Office provides information about European patents and the process of securing patent protection in Europe.

The AIA's one-year grace period - a trap for the unwary?

US Patent & Trademark Office on trade secret protection vs. patent protection.

Questions for You

Does your IP Strategy call for securing patent protection for inventions made by the company? If so, what procedures do you need to implement and institutionalize to ensure that technical advancements are promptly and properly recorded and periodically evaluated for possible patenting?

What management procedures do you need to implement to determine the possible impact on your patent rights of any planned dealings with others, such as responding to a potential customer’s request for quote or entering into a supply contract or joint development deal?

Will I obtain a patent clearance or freedom to operate opinion from patent counsel for new products or features, and if so, when is an appropriate point along the development path to seek such guidance??

Can you obtain useful marketplace intelligence by reviewing the recently issued patents and published patent applications of your competitors?

Questions for Your Team

What procedures do I need to follow in promptly recording technical advancements to be evaluated for possible patenting?

Do I have access to the company’s standard invention disclosure form?

Do I understand the risks of copying a competitor’s product?

Tools and Exercises

Numerous invention disclosure forms and discussion materials are available on-line. Here is one Sample Invention Disclosure Form (PDF).

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