1. Understand the patent landscape in which you operate: Build a picture of comparable patented technologies, what differentiates them, and who the main litigators are in that space. Such patent landscape analysis should be a key input to both strategic and design decisions.
2. Don’t let overcrowding scare you: A crowded patent landscape may still offer opportunities. If you need to enter a specific technology area, look for patents that are close to expiring or filings that may be available for in-license (for example, from companies that operate in different sectors). This can provide a short-cut in your development process and can identify new technology suppliers.
3. Fail early, fail cheap: Perform early checks to ensure that your design concepts are different enough from existing patents. If you can identify possible problem patents early, it will give you time to gain appropriate technical / legal opinions on the patents themselves and to work out if you can get around them somehow. If there are real ‘red flags’, look for alternatives from expired patents or non-competing third parties.
4. It’s not a one step process - keep looking! During the detailed design process, check new work against the patent landscape. In addition, new, competitive filings can be published at any time, so be sure to keep an eye on your space and check over any new filings that could be relevant.
5. Understand what’s inventive and what might have other uses beyond the obvious: Look to protect the unique elements that differentiate your concept. Identify where you may have a technology that has uses beyond your own and protect this technology separately from your overall product. Also think about how the product will be used and any conditions that are specific to this use – can these be used to further define and protect the area?
6. Think globally: File in the geographies that you will operate in and those that you may be able to license to. Think long term: patents typically last for 20 years – which will be your most important geographical markets in a decade or two? Although enforcement in emerging markets may be challenging at the moment, it is getting easier, and these emerging markets may offer you massive revenues in the future.
7. Sometimes patenting isn’t the best option: Consider using trade secrets instead of patents for ideas that cannot be reverse engineered or for which infringement cannot be detected. Registered designs (design patents in the US) can (and should) be used to protect the visual aspects of a product.
8. Don’t have a single point of failure: A set of patent filings is better than a single all-encompassing filing. During the examination process, your patent applications will be narrowed down and may even be rejected. The use of an interlinked set of applications will increase the chances of gaining useful coverage in the end.
9. Don't stop once your patents publish or your product launches: Use the delays in the patenting system to your advantage by pre-empting your competitors and building an R&D program and patenting strategy to ensure you’re always one step ahead.
10. Invest in people, tools and processes: Staff should be aware of good IP practice, have the ability to identify developments that could be protectable and understand the difference between freedom to operate and patentability. This knowledge should be supported with good quality patent search and analysis tools.
Mark Cohen is head of intellectual property services at Sagentia, a technology and product development company. Learn more at: www.sagentia.com