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Only 12 Months to Protect Your Critical Inventions

The last thing you want to hear is, “I’m sorry, but it’s too late to patent that invention.”

I’ve had to share this bad news with far too many business leaders during the past 20 years. This is terrible news for your company, especially when a critical invention is involved.

Even worse, most of the time the problem could have easily been avoided.

The 12-Month Deadline

The United States patent laws have specific timing requirements for filing a patent application.

If a company publicly discloses an invention or sells a product containing the invention, those activities may trigger a 12-month patent application filing deadline.

In most situations, if a patent application is not filed by the 12-month deadline, the company forfeits the ability to protect the invention with a patent.

Unfortunately, many tech company leaders don’t understand these patent filing requirements.

They recognize the importance of patenting inventions, but often let the filing deadlines slip through the cracks because they aren’t aware of the 12-month deadline.

That’s when I become the bearer of bad news.

Sometimes, though, companies get “lucky.”

In one case, a company’s product was first sold almost a year before our initial meeting, but we still had a little time to get a patent application filed before the 12-month deadline. 

This was a great outcome. But if our initial meeting had been scheduled just one week later, there would be no patent for that valuable invention. The invention is critical to the company because it’s part of their core technology that is disrupting the data communication industry.

Invention TriageTM Process

Fortunately, there’s a solution to forfeiting your patent protection – and it doesn’t even require being lucky!

The solution is my Invention TriageTM process.

How does it work? By identifying inventions and determining which ones are the most urgent and need to be handled first.

For example, inventions that are approaching a 12-month deadline are the highest priority.

The Invention Triage process is particularly important when you are just starting to build a patent portfolio or it has been several months since your team identified or evaluated recent inventions.

I recently started working with a computer hardware company that already had four issued patents covering inventions developed several years ago. However, after filing the initial patent applications, the company entirely stopped focusing on protecting new inventions.

Even though several new products were developed and released during the previous two years, no thought was given to identifying and protecting inventions in those products.

Our first activity was to apply the Invention Triage process to identify and prioritize all inventions developed since filing the initial patent applications. This process yielded five important inventions that distinguish the company’s products in the marketplace. We analyzed all of the inventions and had to eliminate three from consideration because they were past the 12-month patent filing deadline.

The remaining two inventions were carefully evaluated using criteria specific to the company’s goals and priorities.

The evaluation determined that both inventions represented significant value for the company, so they decided to file patent applications for both inventions to strengthen their portfolio of patents.

Although three of the inventions were already past the 12-month deadline, the company was able to “rescue” two of the inventions. If they had waited two more months to implement the Invention Triage process, all five of the inventions would have been forfeited due to the 12-month patent filing deadline.

Act Today

You only have 12 months to protect your invention after a public disclosure or sale of a product containing the invention.

After that time has passed, your patent rights are gone.

The Invention Triage process helps you quickly identify looming 12-month deadlines and take action to protect critical inventions.

Even if you have filed some patent applications, don’t assume that you have fully protected all of your most valuable inventions. Conducting a periodic analysis uncovers critical inventions that have not been protected. 

Without this process, those inventions may slip through the cracks and end up being donated to your competitors to use freely.

Does your business need the Invention Triage process? Let’s schedule a brief 20 minute call to find out.

Contact me to schedule your Free Invention Triage evaluation call.

Record-Breaking Year: 354,507 Patents Issued in 2019

The United States Patent and Trademark Office issued over 350,000 patents in 2019.  That’s a record number of issued patents in a single year.  The following link presents a graph showing the growth of issued patents over the past decade:

https://patentlyo.com/patent/2019/12/many-patents-issued.html

As you can see from the graph, the number of issued U.S. patents has been on an upward trend since 2008.  Nearly 3 million patents were issued from 2010-2019 – significantly more than any previous decade.

This data shows that technology companies are serious about filing patent applications to protect their valuable inventions. 

Is your company actively identifying new inventions and filing patent applications to protect those inventions?  If not, 2020 is a perfect time to change that situation.

How many of the 354,507 issued patents are owned by your competitors? 

Will any of your competitors’ patents prevent you from releasing new products or launching new features?

If your competitors are protecting their inventions while you neglect your intellectual property, you may face significant problems if those competitors can restrict your product development activities.

Is 2020 your year to start building (or expanding) your patent portfolio?  I can help.

Apply for a complimentary 20 minute Intellectual Property (IP) Strategy Session where we will review your current IP situation and identify actions you can take to build or strengthen your IP protection.

How to Identify Inventions that need Protection

I’m frequently asked how to identify inventions during product development or after a new product is finished. Here are three things to consider when looking for inventions.

1. What are the key features or benefits of your new product that distinguish it from other products in the market?  For example, does your new product automate processes or provide other benefits to the user that are difficult to obtain with other products (from competitors).  What features do your customers “love” or get rave reviews?  These distinguishing features do not have to be revolutionary ideas – most inventions are incremental improvements.  For example, I recently worked with a company that automates many of the steps for printing custom documents with specialized bindings.  The individual steps have been done by other companies (manually), but my client was able to automate the process which eliminates many printing errors, saves money (fewer human hours), and speeds up the process (by eliminating human delays).  This automation of document printing systems can be patented.

2. What obstacles/problems have you encountered when developing your new product?  Often, the solutions to those obstacles/problems are inventions.  If there was a simple solution, it would likely have been easy to find.  If there isn’t an off-the-shelf solution, then you may have an invention that can be protected with a patent.

3. What new services or activities are made possible by your new product (that were not previously available or not possible)?  Does your system create new types of activities that were never offered before?  For example, if you automate several processes, what new activities or categories of services are now available?  In the printing example I mentioned above, the company is using artificial intelligence (AI) algorithms to optimize the layout, organization and binding of each print project.  The AI algorithms allow the system to learn from previous print projects and continually improve.  This type of detailed analysis and data tracking was not feasible for humans to handle (too much data to analyze manually), so AI is creating a new category of printing service. These types of inventions should be evaluated for patent protection.

Keep these three topics in mind as you develop new projects and set aside time after a project is finished to identify critical inventions in that project. These inventions are valuable and may give you a competitive advantage with your new product.

Do you have questions about how to protect your inventions?  I can help.

Apply for a complimentary Intellectual Property (IP) Strategy Session where we will review your current IP situation and identify actions you can take to build or strengthen your IP protection.

3 Tips to Protect Your Intellectual Property in 2020

A strong intellectual property (IP) portfolio is critical for technology companies, which rely on inventions to survive.  Without a robust IP portfolio, your company is exposed to risks from new competitors that can freely copy your unprotected inventions.  And, lack of a strong IP portfolio may increase the likelihood of patent litigation by aggressive competitors and may hinder attempts to attract investors who demand valuable IP assets.

Strong and secure IP portfolios don’t just happen.  They’re built.

These portfolios are built on purpose by strategically adding high-value inventions.  If you need to start building or expanding your IP portfolio, here are three steps to get started.

1. Protect the Right Inventions.  A valuable IP portfolio includes patents covering core technology as well as future ideas and inventions that are important to competitors.  Use specific criteria to evaluate inventions based on current business value, feasibility and lifetime value.  Action Step:  Review your current IP portfolio to be sure all of your core technology has been protected.

2. Use Provisional Patent Applications to Quickly Protect Inventions.  Establishing early filing dates for your inventions is important in the United States.  Provisional patent applications provide fast and cost-effective protection for important inventions.  Action Step:  Identify the most important new inventions your team has developed and quickly file provisional patent applications covering those inventions.

3. Watch Out for Public Disclosure.  Implement systems to identify important inventions so you can secure your patent rights prior to public disclosure, such as trade shows, white paper publications and press releases.  Action Step:  Identify upcoming public events and be sure you have protected any inventions being disclosed publicly.  If necessary, protect those inventions quickly using a provisional patent application.

Do you have questions about how to strengthen your IP portfolio?  I can help.

Apply for a complimentary IP Strategy Session where we will:

  • Review your current IP situation
  • Explore your business goals, such as obtaining investments, attracting critical employees, expanding your product offerings and increasing your market presence
  • Identify your best “next step” to build or strengthen your IP portfolio

Apply for your complimentary IP Strategy Session at IPStrategySession.com.

A Fast Way to Achieve “Patent Pending” Status

“Patent Pending” is a designation used to indicate that a patent application has been submitted to the U.S. Patent and Trademark Office (USPTO) for an invention. Using the “Patent Pending” designation on your product, and marketing materials associated with the product, may discourage competitors from copying your product.

A new patent application typically remains confidential for 18 months after the filing date. During this period of confidentiality, the “Patent Pending” designation is particularly valuable because competitors cannot determine any details regarding the invention. They know you have submitted a patent application, but don’t know what it covers or whether they can avoid patent infringement.

Additionally, the “Patent Pending” notice can be a valuable marketing tool because it will cause some customers to perceive your product and company as an innovative leader in your marketplace.

Before applying a “Patent Pending” designation to your product, you must have a pending patent application with the USPTO and an assigned serial number. This can be accomplished by filing a provisional patent application (PPA) or a “traditional” non-provisional patent application. You can continue to use the “Patent Pending” designation as long as the application remains pending in the USPTO and has not been abandoned or issued as a patent.

In most situations, the fastest way to achieve “Patent Pending” status is by filing a PPA, which provides a fast and cost-effective tool to establish a filing date in the USPTO and receive a serial number. A PPA has fewer requirements and is much simpler to prepare, saving time and money. Additionally, the USPTO filing fees for a PPA are considerably less than a traditional patent application.

Other important advantages of filing a PPA include establishing a filing date for your invention with the USPTO and giving yourself 12 months to continue developing the invention and testing it in the marketplace.

If you file a PPA to get “Patent Pending” status, remember that a PPA expires after 12 months. If you don’t file a traditional patent application (or file another PPA) at the end of the 12 months, you no longer have “Patent Pending” status and you must remove that designation from your product, marketing materials, etc.

If you want to use the “Patent Pending” designation on your product and, at the same time, establish a filing date for your invention, a provisional patent application is a fast and cost-efficient tool to accomplish both.

Ready to learn how to protect your own inventions? Get details about the Invention Protection Blueprint course at http://InventionProtectionBlueprint.com

Most Common Mistake In Provisional Patent Applications

A provisional patent application (PPA) is a fast and cost-effective tool to protect your valuable inventions.  A PPA establishes a filing date for your invention in the U.S. Patent and Trademark Office (USPTO) and provides 12 months to decide whether to file a “traditional” non-provisional patent application.  During those 12 months, you can continue to develop the invention, test the commercial value of the invention, and seek investors, business partners, and licensing opportunities.

As an intellectual property attorney, I have written hundreds of PPAs and reviewed more than 1000 PPA documents.  Based on this work, I have discovered the most common mistake when preparing PPAs.

Inadequate description.

Although a PPA is a valuable tool, it must meet certain requirements to be valid.  For example, a PPA must have the same level of written description as a “traditional” patent application.  The written description of a PPA (including the drawings) must teach someone who is skilled in the relevant technology to make and use the invention.

I’ve seen many PPA applicants submit marketing brochures and lists of invention benefits without any description of how the invention is implemented.  These applications are not valid and will not be given the benefit of the PPA filing date.

Failing to satisfy the written description requirement provides a false sense of security.

Although a PPA was filed, the USPTO will not recognize the filing date of the PPA if it has an inadequate description.  Unfortunately, the inventor may be disclosing the invention publicly during the 12 months after filing the PPA, falsely believing that they have protected the invention.  In some situations, this public disclosure of the invention may prevent them from obtaining a patent on their invention.

When preparing a PPA, focus on a strong written description that explains the benefits of the invention as well as specific details regarding how to make and use the invention.  I recommend using drawings that complement the written description.  Often, the drawings can help illustrate features of the invention better than relying exclusively on a written description.

Avoid this common PPA mistake to ensure you have a valid application that provides the protection you require.

Ready to learn how to protect your own inventions? Get details about the Invention Protection Blueprint course at http://InventionProtectionBlueprint.com

It’s Time for Your Intellectual Property Assessment

July 1 marks the midpoint of the year.  This is a perfect time to assess your intellectual property (IP) situation.  If you’ve been neglecting your IP, you are not alone.  Many tech company leaders I’ve talked with have done nothing in the first six months of 2019 to identify and protect their IP assets.

Let’s fix that problem!

You already know that properly protected IP can provide a competitive advantage and protect your valuable innovations from being stolen. Don’t let another 6 months go by without giving serious attention to your high-value IP assets.

I’ve been helping tech companies with Intellectual Property Assessments for more than 20 years.  Based on my experience preparing these assessments, here are four things you can do to build your IP portfolio in the next six months:

  1. Be sure you are identifying inventions and filing patent applications. More than 150,000 patent applications were filed during the first half of 2019 – how many did your company file?  If your answer is “Zero”, change that in the next six months.
  2. If you have hired new employees in the last six months, train those new hires on the importance of IP and teach them how to identify inventions.
  3. Smart organizations schedule regular brainstorming sessions and invention contests to create an innovation culture that produces a steady stream of new inventions. How many brainstorming sessions and invention contests did you conduct in the first half of 2019?  If your answer is “Zero”, add this to your list of key activities for the second half of the year.
  4. Schedule an “invention mining” session to analyze any new products (or product enhancements) released in the past 6-12 months. Look for any critical inventions in those products and take steps to protect the inventions.

Don’t spend another six months ignoring your valuable IP.

Failing to protect your IP in a timely manner may cause inventions to become freely available to your competitors.

Get started with at least one of the above activities this week so you have a stronger IP portfolio by the end of the year.

The four activities listed above are part of my 12-point Intellectual Property Assessment.  This assessment provides a comprehensive analysis of a company’s current IP situation and identifies problems to fix.  Based on the analysis, I map out an IP plan for the next 6-12 months that will expand the company’s IP assets.

If you are interested in learning more about an Intellectual Property Assessment for your organization, let’s schedule a time to talk.  Click Here to Contact Me.

 

Need a fast, cost-effective method to protect your most valuable inventions? Try this.

Many people are familiar with “traditional” patent applications, which are referred to as non-provisional patent applications.

These are formal patent applications with specific rules regarding a written description, drawings, and claims that define the legal protection provided by each non-provisional patent application. The applications are typically prepared by patent attorneys (or patent agents) and go through an examination process to determine whether the invention described in the application is patentable.

A well-drafted non-provisional patent application typically costs $8,000-15,000 depending on complexity.

However, there’s another type of application referred to as a provisional patent application (PPA). This application allows an inventor to establish a filing date in a fast and cost-effective manner.

A PPA is not examined and never becomes a patent itself, but it’s a powerful tool for securing a filing date that gives the inventor time to determine whether to file a more expensive non-provisional patent application.

Here are three crucial benefits of incorporating PPAs into your intellectual property strategy:

  1. Establishes a filing date for your invention with the U.S. Patent and Trademark Office (USPTO)

The United States is aContinue reading

Most Technology Companies Fail to Protect their Critical Intellectual Property Assets. Here’s Why.

Most technology companies take a haphazard approach to protecting their vital intellectual property (IP) assets. They have no system to identify innovative ideas, prioritize which ideas are the most valuable, and build a strong IP portfolio filled with strategic inventions.

Inventions are critical for technology companies to maintain a competitive advantage. New competitors can “come out of nowhere” with a product that steals market share from well-established companies. Without a strong IP portfolio, your company is at risk of lost revenue – or worse – due to these competing products.

Thus, your company needs a system for identifying, evaluating, and protecting important inventions and other IP.

Keep away from the haphazard approach to protecting your IP.

This approach is guaranteed to fail.

IP strategies are not taught in college or high school, so most people never learn these skills.

Here’s how most tech companies fail to begin identifying and protecting their valuable IP assets, and how you can avoid doing the same:

  1. They fail to assess their current IP situation

The lack of guidance or knowledge about IP causes most companies to either ignore the subject or randomly prepare a couple patent applications without determining whether they actually benefit the company.

The unfortunate result is a weak IP portfolio with patent applications that do not provide significant value to the organization.

Building a strong IP portfolio requires Continue reading

7 Ways To Protect Your Intellectual Property in 2019

A strong intellectual property (IP) portfolio is critical for technology companies to maintain a competitive advantage and drive company growth.  Here are seven ways to protect your IP and strengthen your IP portfolio.

  1. Identify Your Intellectual Property Assets. You can’t take steps to protect your IP until it is identified.  Create systems that discover these assets as part of your day-to-day operations.
  2. Consider All Types of Intellectual Property Protection. Learn how to use all four types of IP (patents, trademarks, copyrights, and trade secrets) to secure those assets.
  3. Use Provisional Patent Applications to Quickly Protect Inventions. Establishing an early filing date for your invention is important in the United States.  Provisional patent applications offer fast and cost-effective protection of important inventions.
  4. Protect the Right Inventions. A valuable IP portfolio includes patents covering core technology as well as future ideas and inventions that are important to competitors.
  5. Watch Out for Public Disclosure. Implement systems to identify important inventions (so you can secure your patent rights) prior to public disclosure, such as trade shows, white paper publications, and press releases.
  6. Use Proper Agreements to Ensure Ownership of Your Intellectual Property. Use signed agreements that require all employees and contractors to assign IP rights to the company.  Promote the use of non-disclosure agreements and confidentiality agreements throughout your organization.
  7. Develop An Innovation Culture. Encourage all team members to spend time on innovative activities, which creates a steady stream of new ideas and fosters a strong work environment.

Are you ready to create a plan to strengthen your IP portfolio?  Apply for a complimentary IP Strategy Session where we will review your current IP portfolio and identify actions you can take to strengthen your IP protection.  Apply for your complimentary IP Strategy Session at IPStrategySession.com.