Patent Prosecution Pointers

Many of the common pitfalls in the defense and enforcement of patent rights can be avoided through careful planning and early consultation with competent patent counsel. Although we assess the needs of each client individually, we find that the following "practice pointers" are applicable to most companies or individuals who create patentable inventions.

• Set up a patent committee including heads of marketing, business development, engineering, and in-house legal department to work with patent counsel to develop and hone a patent strategy that is implemented on a company-wide basis to advance your company's business. Educate your co-inventors and employees as to why patents are important.

• To protect your investment in research and marketing, consider developing a multi-pronged approach to protecting your intellectual property, incorporating utility patents, design patents, copyright, trademarks and/or trade secrets. Since there are differences between patents and other types of intellectual property, employing several types of intellectual property to protect a product line can be very valuable.

• Have written agreements signed by any employee or third party who may be inventing on your behalf. Otherwise, it may not be clear who owns the patent.

• Educate co-inventors and employees about the importance of adequate documentation of development, including witnessing by non-inventors. Such documentation could be very valuable in an interference

• Have searches performed to determine the novelty and the non-obviousness of inventions. In many industries, it is also prudent to learn of patents that may cover your product.

• Consult with a patent attorney early in the development process. A patent application may be filed before a prototype is built, and it is often prudent to file a patent application as quickly as possible.

• Use provisional patent applications to establish an early date of invention.

• Watch for possible statutory bars to filing patent applications and remember that foreign countries generally do not have a grace period and the U.S. has only a one-year grace period.

• Consult with a patent attorney about the advisability of having a formal, comprehensive clearance opinion prepared if a patent belonging to another presents a possible problem.

• In order to maximize your recovery in a patent infringement suit, make sure that you and your licensees are properly marking the patented products.

If you have any questions about patent defense and enforcement, contact a member of our Patent Practice Group.