What is a patent and IP strategy and what is the right strategy for me?

In its broader definition, Intellectual property refers to intellectual creations, such as inventions; literary and artistic works; designs; and commercial symbols, names and images used in commerce. These creations can be commercially protected by patents, trademark, design and copyrights.

What is a patent and IP strategy

In our modern economy, intellectual property (IP) is an asset and a tool that should be created and managed as any other economical asset. An IP strategy is a long term plan, specifying the optimal way to acquire, manage and commercialize a single or multiple IP assets. A good IP strategy should answer questions such as – What type of IP protection is needed? Does my idea qualify as a patent? What is the optimal way to get protection? What is the extent of protection needed ? What is the best way to commercialize and monetize my IP asset? In What countries or areas do I need to get protection? What are the costs of acquiring and managing IP? etc.

Developing the right IP strategy

What is the type of IP needed?

The first step is to determine what is the type of Intellectual Property protection that you need and the exact scope of protection it gives:

  • A patent protects an invention such as a product, a process or an apparatus. Patents allow the owner to prevent third parties from making, using or selling the invention without their owners’ consent. It is important to remember that patents are territorial – A patent is valid only in the country it was submitted and approved, for a specific time period (usually 20 years), and it is granted by a national or regional patent office.
  • Utility models can be registered in some countries, to protect technical innovations which might not qualify for a patent.
  • Copyright protects creative and artistic works such as literary texts, musical compositions and broadcasts, against unauthorised copying and certain other uses.
  • Trade marks are distinctive signs identifying brands of products or services. They may be made up of two or three-dimensional components, such as letters, numbers, words, shapes, logos, pictures, or even sounds
  • Designs and models protect a product’s visual appearance, i.e. its shape, contours or colour.

Search and research

In order to be patentable, an invention must be industrially applicable, new, and involve an inventive step over prior art, i.e. if your invention has already been publicly disclosed in any way or form, you cannot get a patent. Therefore, you should conduct a thorough search, using one of the countless free and open search tools. If you’re not professionally trained in Informatics or patent searches, it’s recommended to retain the services of a specialized patent research company, which uses search professionals, with access to professional paid databases. The patent research company will provide you with a search report that will help decide if and how to proceed.

At this stage, it’s also advisable to conduct a commercial search, in order to obtain a good picture of markets, potential competitors, risks analysis, production and marketing costs, similar IP assets transactions etc.

What is the commercial end goal – Produce, Certify or Sell

After analyzing all the information above, you should decide on the long term business plan – Am I going to turn my invention into a product, to produce and sell it independently? Am I planning to sell my patent or certify it to another party? If so, at what stage and what would be the terms?.

Selecting potential markets

An important decision to be made is in which countries you’d like to protect your idea, depending on your goals and resources. As mentioned above – patent protection is territorial, i.e you must file your applications in each and every country you want to protect your patent, paying fees to each of them.

After making this decision, you can choose what kind of specific protection you need, according to the patent and IP laws in each country (Utility patent, Design patents etc.)

What is the Most Suitable IP Filing Path?

First, It’s recommended to contact a patent attorney, agent or IP consultant, in order to go over the findings of your search. Together, you can conclude on the most suitable filing path.
Here are some popular examples –

  • File the application in one single country.
  • File a provisional application in the US – An application with a general description of the invention, which is not published or examined, and is used only to secure the filing date. The provisional application has a pendency of 12 months (no extensions). Therefore, the applicant must file a corresponding nonprovisional application for patent. A provisional application provides a one-year extension, securing the applicant an additional year to perfect his invention, raise funds, determine sales potential and find interested parties for licensing, all before filing a nonprovisional application.
  • File an application in multiple countries. There are two main ways to do so –
    1. File an application in every country in which you need to protect your invention (simultaneously or according to the “Paris Convention“ – 12 month after the first submission), while following each country’s patent submissions laws, rules and regulations, and paying multiple sets of fees.
    2. File an application under the PCT (commonly known as international patent application), and later on (up to 30 month), proceed to the National Phase: start seeking the grant of your patent in each national (or regional) patent office of your choosing.

Draft, File, Negotiate and Manage

You (or your patent Attorney/Agent) draft and file a full patent application, according to the laws and regulations of each regional patent office you chose. Then the examination stage starts – a process which is a form of legal negotiation, that may span a few months to several years. It’s important to remember that most applications get several rejections until finally being approved.

After your patent is approved, you will need to keep paying maintenance fees for the next 20 years. Failing to do so will cause your patent protection to expire. If you have multiple patentes in multiple countries, it’s important to track each single one of them, and pay all fees according to each country’s rules and regulations.

Commercialising and Monetizing – Stage 2

Being the owner of IP rights (patet, design, trademark etc.), is like being the owner of a tangible commercial asset. Beyond basic maintenance fees, there are many possible choices and actions to make – Decide how to best monetize your rights (sell, licence etc.), search for potential infringements, decide on a yearly basis whether to continue paying fees, search for new ways to commercialize your IP rights and so forth.