There are three primary goals to keep in mind when building a Patent portfolio:
- The prudent use of company funds to generate and prosecute Patent applications to a successful conclusion,
- Capturing innovations efficiently and effectively by minimizing the time inventors are taken away from their primary tasks in the company, and
- Having an IP Strategy to guide the way.
As startups begin to scale they are typically, not large enough to justify hiring an in-house Patent counsel. Therefore, it is important that founders and the technical team forge a positive working relationship with outside IP counsel. It is imperative that the Patent attorney(s) with whom you are partnering not only understands your technology, but is also aware of any potential financial challenges faced by the company. These challenges should then be taken into account by the attorney when recommending courses of action during the Patent preparation and prosecution process.
A client (Chief Technology Officer) once told us, “All the patent attorneys I worked with at my former company didn’t know crap about what we were doing. I would routinely lose an engineer for two to three weeks while they wrote the patent application draft for the attorney. This cost me money out of my budget, not to mention the lost productivity time. “
While innovators should adequately disclose their innovation(s) to your Patent attorney, they should not write the draft patent application otherwise, why are you hiring an attorney?!
When building a patent portfolio, it is important to strategically consider which innovations should be patented in order to increase the value of the company.
The Patent prosecution time frame can be a long one, especially for those innovations that rely on software or compositions of matter. For this reason, a strong Patent Strategy will include innovations that may be completed and/or improvements that will be made within the next 12 to 18 months. This will allow the management team to then pursue Patent applications resulting in the strongest asset protection possible.
Although no one can guarantee that any given Patent application will be successfully prosecuted to an issued Patent, doing your research in advance and filing applications in accordance with a sound Patent Strategy provides the best assurance that granted Patents will be strongly enforceable.