If the survival and growth of your business depends on the development of new technology, the beginning of the new year is a good time to think about your intellectual property (IP) protection and how it can be improved. Patents, in particular, are the lifeblood of a technology company's future. Even if your company has filed for patent protection in the past, it would be wise to evaluate how your company's patent protection is managed, and whether changes are needed. Here are several steps you can take to improve your patent strategies in 2018.

Ownership

Being at the forefront of new technology has the potential to be highly profitable, but if your company does not own the rights to the technology it is developing, monetizing that technology can be difficult. That is why it is so important to make sure your company owns the rights you think it owns. First and foremost, your company's employees should have contractually agreed to assign to the company the rights to any technology created by them as a result of their employment. Each and every time a new employee is hired, the employee should sign a written agreement assigning all intellectual property rights to the employer. Many companies also ask employees to list technology developed prior to and outside of their current employment to ensure that there is no question as to exactly which rights the company is entitled.

It is important, also, to ensure consultants and outside vendors agree that any technology developed during the performance of a contract with your company belongs to your company. This guideline applies both to individual consultants and to vendor companies that are assisting in product development. Before engaging any outside party to assist with the development of technology, always ensure that a written contract is in place that requires the assignment to your company of innovations developed during the performance of the contract.

Comparison With Competitor Products and Services

As a technology innovator, your company is trying to dominate a certain market space, as do your competitors. It is thus vital to compare the products and services you are planning to provide with the products and services being offered by your competitors. Your company's engineers should have a good understanding of the products and services your competitors currently have available on the marketplace. Your sales staff, as well, should be knowledgeable of both the features that your customers like (whether offered by you or your competitors) as well as the complaints about the limitations of currently available products and services. If your company is trying to address a marketplace “wish list,” then your employees should know where and why current problems exist. It would also be helpful to understand how competitors are trying to solve current problems, to the extent that information is available.

Technical Feature Isolation

Once you understand the technical problems your company is focused on, the next step is to take a very close look at the details of the proposed solutions. If your company is developing a competing product that can be sold at a price lower than your competitors, how is technology being used to lower the price? What technical innovation is being relied on to produce a product or service that is cheaper? If a product that operates faster than the competitor's product is being developed, how is technology being used to achieve that faster result? What aspect of a design gives your company's product faster speed over the competition? If your company's  product provides a more personalized experience, how has technology been used to obtain that personalization? In what ways has your company's product been designed to provide a more unique experience to each user?

It is thus valuable to look at the advantage that your product or service obtains over your competitors and then to understand, from a technical perspective, how that advantage is achieved. Your company's engineers and development staff incorporate specific aspects into their design to achieve better results than those obtained by your competitors. You need not only to understand how these features have been implemented from a broad, generic perspective, but to be aware of how the basic concepts that enable that commercial advantage are achieved.

Formulate a Protection Plan

After identifying where your company technologically excels, and the specific design features that achieve that excellence, it is necessary to understand the other options that are available so that your innovations may warrant patent protection. You should think of patent protection as an investment in your company's future. Like any investment, it is important that patent protection be performed thoughtfully, and not merely speculatively. Patent protection can be very expensive. Therefore, it is imperative to rely on cost savings mechanisms, when appropriate, so that patent protection is obtained in a fiscally prudent manner. Some patent applicants rely on provisional patent applications that can be filed at a lower expense than non-provisional (leading to patent grant) patent applications and with much fewer formality requirements. Using the patent strategies outlined above, technical innovations can be captured and filed as provisional applications with the US Patent and Trademark Office (USPTO) in order to secure a “filing date.” Once a filing date is obtained, the patent applicant has 12 months to file a formal nonprovisional patent application, at which time higher expenses are incurred. Another tool for reducing costs is to file a patent cooperation Treaty (PCT) patent application. PCT applications provide up to 31 months of delay before a patent applicant must decide if foreign patent protection is desired. PCT applications are not cheap, but the combined cost of filing patent applications in multiple foreign countries can be significant, and a PCT application can defer costs. Another important consideration when it comes to foreign patent protection is to know the foreign countries where your competitors are doing business. With this knowledge, you may be able to identify where your company should file for patent protection in order to try to exclude your competitors from using your technology in that market.

With the strategies described above, 2018 can be the year in which your company takes the right steps to create valuable patent protection.

Lawrence E. Ashery is a partner in the Philadelphia office of Caesar Rivise. He focuses his practice on all aspects of intellectual property law. He can be reached at [email protected].