Patent Prosecution Process Overview

From a patent committee standpoint there are business decisions related to the patent prosecution process that must be made in a specific timeframe. These are shown in the “Patent Processing Decisions” figure. What’s important is that the deadlines shown on the figure have to be carefully followed in order to preserve patent rights [...]

2021-10-08T15:08:18-07:00

Priority Setting Process for Patent Applications

Filing Priority Matrix Figure For large corporations once a decision has been made to file a patent the next issue associated is the priority of the filing so the legal department and external counsel prosecution schedules can be managed. The “Filing Priority Matrix” figure uses anchored scales to tie the time urgency of [...]

2021-10-08T15:08:55-07:00

Review Process for Invention Disclosures

Invention Disclosure Evaluation Process Once an inventor fills out an invention disclosure is typically submitted to an entities’ patent committee or legal counsel for review.  The “Invention Disclosure Evaluation Process” figure shows an overview of the process.  The reviewing personnel assess the invention for its likely novelty, relative performance, relative cost to produce, [...]

2021-10-08T15:12:44-07:00

Elements Included in Invention Disclosures

Also listed in the disclosure should be: The most relevant potential application of the invention. Usually a company will supply a checklist of its business units along with an option to specify uses outside the company’s current product lines. A concise description of the invention. A clear description which explains the idea and [...]

2021-10-08T15:12:54-07:00

Definition/Description of Invention Disclosures

Previous sections of this book have dealt with the management of the research and development / innovation processes using both traditional stage-and-gate processes as well as a lean / agile processes.   It is during those processes that IP creation and documentation occurs. Invention Disclosure has to be conducted real time to be effective [...]

2021-10-08T15:13:02-07:00

Questionnaires for Deciding between Patents and Trade Secrets

Deciding between a patent and a trade secret as a way to secure a sustained advantaged competitive position is not a black and white decision, but one where various shades of grey must be considered. As such a “Preferred Mode Matrix” is created. A team of experienced cross functional personnel, typically found in [...]

2021-10-08T15:13:17-07:00

Selection Processes for Patents vs. Trade Secrets

An important process of intellectual property management is to make the appropriate selection between what to patent versus what to hold as a trade secret. A recent IPO survey indicated that trade secrets are the really important intellectual assets of a company vis-à-vis patents, because patents have limits. Trade secret protection operates without [...]

2021-10-08T15:13:25-07:00

Visual means for performing a self-assessment of patents

Self-Assessment of Patent Portfolio Visual means for performing a self-assessment of patents is shown in the “Self-Assessment of Patent Portfolio” figure.  In this figure each patent of the Corporation (or for a large corporation each business unit) is plotted along two axes.  The patent’s placement on the vertical axis corresponds to the business [...]

2021-10-08T15:13:37-07:00

Six Key Processes to Create an IP Strategy

Six key processes to create an IP strategy have been outlined by James Malackowski of the IPC group.  They included by first performing an IP self-assessment.  By interviewing general managers across a Corporation and looking at the number of yes versus no responses to following questions creates a self-assessment that indicates the degree [...]

2021-10-08T15:14:02-07:00

Management of Intellectual Property by Type of Innovation Environment

Management of Intellectual Property by Type of Innovation Environment The rows of the “Management of Intellectual Property by Type of Innovation Environment” figure contain attributes a company would wish to find, or create for itself, in the ideal or desired IP environment in order to obtain the most value from its investment in [...]

2021-10-08T15:14:08-07:00
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