Five tips for managing your patent assets

• Author: Jason M. Schwent
• Position: Thompson Coburn LLP, Washington, USA

But patents are not cheap. Most businesses cannot afford to patent (or attempt to patent) all their technological advances. So how can businesses most effectively manage their technology and patent strategy so that they receive the protection they need when they need it?

Here are five tips for managing your patent assets.

1. Prioritize patenting

   It sounds simple, but if you want your business to maximize patent assets, you need to make patenting your technology a priority. This means more than simply patenting those technological advances your company considers to be valuable. This allows far too many assets to slip through unprotected and risks unauthorized disclosures along the way – invalidating some potential patents.

   Maximizing patent assets requires a company-wide commitment to protecting intellectual assets. This means educating employees on what sort of advancements can be patented. Unfortunately, many engineers, developers and research and development personnel undervalue their technological advances, but identifying all possible inventions means more exploitable technology for the company.

   Maximizing patent assets also means educating your management on the costs associated with patenting technology. Patent acquisition is not cheap, although there are systems such as the Patent Cooperation Treaty (PCT) which offer a cost-effective means of protecting patents internationally. Patenting costs need to be seen as an investment in the company and not expenses to be cut. And, perhaps most importantly, prioritizing patents means enforcing the patents you do obtain against infringers. Patent infringement actions are very expensive. But without enforcement (or the credible threat of enforcement), patents are not worth the paper they are printed on.

2. Identify early

   One of the most important tips for managing your patent and potential patent assets is to have a process in place to identify key technological advances early in the development process.

   Knowing what technology is being developed and carefully evaluating it with an eye toward the marketplace will allow the company to muster the assets necessary to protect key advances. This evaluation should not be limited to research and development personnel alone. Ideally, for maximum returns, key marketing, sales and management personnel, should all be involved in this evaluation together with research and development personnel and a qualified patent attorney. While this evaluation is...