Patentable inventions do not arise in a vacuum. They usually arise in the context of a sales team trying to land an account, often with time constraints and the added pressure of trying to outflank a competitor. The customer is telling the sales people what it wants, the technical team is trying to figure out how to meet the customer demands, and everyone is often trying to get it all done as quickly as possible. In the midst of all this activity, the technical people develop innovations to meet the customer's demands. These innovations may be patentable, and it may be critical to protect them to obtain and preserve a competitive edge. In our work at Hansen IP Law, we have seen this type of scenario play out many times with our clients.
This is when it is critical to make sure that all of the involved functions--technical, sales, and legal-- know what the others are doing. Failing to do so can put valuable intellectual property rights at risk. In many cases, companies get very close to commercialization before they involve their patent counsel, and as a result, there is a rush to get a patent application on file before a commercial launch date to avoid losing US or foreign patent rights.
The public disclosure of an invention even one day before filing may compromise your ability to obtain patent rights in many foreign countries. Under the America Invents Act, a disclosure by the inventors or those to whom they have assigned their rights starts a one-year clock running in which an application may still be filed before it is barred. However, if a third-party files a patent application for the invention, the one year grace period does not apply. Thus, it is important to file an application before any disclosure of the invention is made to third parties and certainly before a commercial launch date.
In these situations, the sales or marketing team is often negotiating deliverable deadlines with the customer. In parallel, the technical personnel are working to develop and finalize the product to meet the deadlines. As an example, let's say a supplier of control systems for refrigerators is developing a new control system that will reduce energy costs in household refrigerators. The customer knows that it wants to satisfy certain cooling requirements for the refrigerators and reduce energy consumption by a certain amount. Your technical team develops a control system that meets those requirements. The control system includes various sensors, control valves, controllers, and control algorithms. The technical team works toward providing a fully functioning product by the deadline negotiated by the sales team.
The problem is that the technical personnel are not necessarily focused on identifying what is patentable about the control system. That is the job of the patent lawyer. The control system almost certainly involves some well-known components, but it also may use them in a different way, such as with a unique control algorithm.
Once a patent search is conducted, it may reveal that more testing and development is required. The potentially patentable features should be developed so that they can be described and claimed in a manner that is sufficiently definite to satisfy the Patent Statute and to determine if competitors are infringing. That work takes time. Meanwhile, deadlines continue to loom based on what the sales people have negotiated with the customer.
Failing to coordinate the efforts of the technical and sales teams with patent counsel could result in the product being disclosed without any patent application on file or it could necessitate the filing of a quick and dirty provisional application that lacks sufficient detail to ultimately provide any real value. It is important that the various stakeholders know what the other stakeholders are doing. This can be handled through periodic conference calls, e-mail status updates, sharing of team calendars, or any number of ways.
Management and sales personnel may assume that applications have been filed when they have not because there is no mechanism in place to keep track of the status of filings. This can be particularly problematic if such personnel are talking to customers about details of the technology that are potentially patentable. It is always a good idea to talk to your patent lawyer before divulging technical details of a valuable technology.
In addition, changes in scope often occur as products are developed and may require revising and rethinking initial patent strategies. To better ensure that your innovations are well protected, make sure that all stakeholders are on the same page and aware of the other stakeholders' expectations and timing requirements.