In Part 1 we got a taste at a helicopter view what IP is.
In Part 2 we discussed the major different types of Intellectual Property.
In our final installment Part 3, we find out the steps to take in order to commercialise your IP.
nepchin: “So if nepchin, as business came up with an idea, what are the next steps to protecting that IP, is it protected everywhere?”
Brendan: “If nepchin came up with an idea, and put enough effort into turning that idea into an invention, my personal advice as for a next step is to do a bit of market research and business analysis to see if it is advantageous in a business sense to apply for a patent. Of course, many patent attorneys won’t tell you this as in doing so they might well be talking themselves out of a job! But let’s say that you have done all your research and analysis and determined that a patent application is the right way to go, your first steps would be to:
1) find a good patent attorney;
2) explain to him/her what your invention is and what you intend to do with it and who your main competitors are; and
3) get him/her to prepare a patent application for you and have it filed with IP Australia.
Once your application is filed, it will take a number of years for your application to go through the examination process, and if your invention is indeed a new and inventive invention, you should have a patent at the end of the process.
Unfortunately, patent protection has to be sought in each and every country that you want to obtain protection in. There is no such thing as an international patent. There is a process known as PCT that simplifies the administrative and logistical process for obtaining patents in multiple countries around the world, but it does not give you a ‘worldwide patent’.
The good news is that you really only need to obtain patent protection in the largest markets that you intend to sell your invention in. A good attorney who spent the time learning not just about your invention, but also about your business, should be able to advise you on this.
One thing that I would strongly recommend against is trying to write your own patent application. Unless you have received training in how to prepare a patent application you really shouldn’t try doing so, as it is very likely that you will end up with a pile of scrap paper, or worse still, end up with a patent that you paid a lot of money for but cannot use.”
nepchin: “What should one look out for when working with a Patent Attorney?”
Brendan: “I think most people know of the two basic measures of a patent attorney, namely experience in patent law and knowledge in the technical field of your invention. You should of course find a patent attorney who is sufficiently experienced in drafting and prosecuting patent applications and who understands the technology you are trying to patent.
In addition to the above two basic measure, however, I feel that it is extremely important that you find an attorney who is also able to:
1) spend the time learning about your business;
2) find out what your niche in your market is;
3) work with you to develop an IP strategy;
4) plan with you to integrate patents and other forms of IP protection into your business plan;
5) help you shape and define your invention in a direction that compliments your business plan; and
6) work with you to commercialize, monetize, and exploit your patent when you get it.
nepchin: “what are the pros and cons with working with different types of attorneys, such as big firms, small and freelance?”
Brendan: “That’s a great question, and what’s right for you is quite dependent on what kind of service you are seeking.
With big firms, you get the security and resources that only such entities can provide. Big firms will draft your patent for you, file it, take care of all administrative and financial transactions with the patent office, remind you of all critical deadlines, and provide you with legal advice. With big firms, you can essentially leave everything in their care and rest assured that if there is anything that needs your input, they will contact you for it.
What big firms perhaps do not do that well, or at all, is taking the time to learn about your business, finding out what it is you are trying to achieve with a patent, investigating who your competitors are, and working with you to develop an IP strategy that is best suited to your business. Their core business is to provide you with all the legal expertise needed to obtain a patent, and they do that brilliantly. However, anything outside of this core business is generally seen as detracting from their main effort. I am generalising here, but with big firms, the scope of their service tends to start from the drafting of the initial patent and end at the obtaining of the patent. They assume that you have already determined that a patent is right for you, and that once you have your patent you will know how to exploit it to give you the competitive advantage you seek. Big firms also tend to charge more.
Small firms are not dissimilar to big firms, but tend to provide a more personal level of service. Many small firms will sit down with you to learn more about your business, and put more time into tailoring your patent application to better suit your business and the environment your business operates in. Small firms, like big firms, will also take care of all administrative and financial transactions with the patent office, remind you of critical deadlines, provide you with legal advice, and so forth. Small firms provide a good combination of personal service and security.
Like big firms, however, the core business of small firms still is to provide you with all the legal expertise needed to obtain a patent. In this regard, the scope of their service also tends to start from the drafting of the initial patent, albeit with more time spent in understanding your business, and end with the obtaining of the patent. Small firms will also have a narrower range of technical expertise. So if your invention is in a very niche field (for example, carbon nanotubes for use in culture cultivation), a small firm may not have the technical expertise needed to properly advise you and draft a patent application for you. Small business do tend to be noticeably cheaper than big firms however.
With freelance attorneys, it is actually very hard to collectively describe their pros and cons as each freelance attorney has a different focus. Some focus on providing an ultra-low cost, minimalist service, whilst others focus on providing an extremely personal level of service, whilst others still focus on something else entirely.
Personally, I focus on providing a highly personal level of service that begins at a very early stage (well before the drafting of a patent application) and ends at a very late stage (well after the obtaining of a patent). What I seek to do is to thoroughly understand my client’s business, including their products, competitors, business plan, marketing strategy, financial resources, expansion plans, future plans, and so forth. From this, I work with my client to develop an IP strategy that details the kind of protection we want to achieve, and how the patent, when obtained, will be used to generate an income or otherwise secure a competitive edge. Only then do I begin on the traditional attorney work of drafting and prosecuting.
The main advantage with this type of service is that the client get a thorough understanding of how the patent fits in with their overall business, and understands what needs to be done with the patent to make the patent earn its keep. The strategy is laid out well before pen is put to paper, and all decisions made as the patenting process unfolds are made in consideration of this strategy. Accordingly, all time, costs, and efforts are economized to achieving this strategy.
The biggest disadvantage with working with freelance attorneys is probably their lack of infrastructure and management resources. The freelance attorney will be able to advise you of your critical deadlines, but management of these deadlines and reminders will likely be your own responsibility. You will also be more involved with and exposed to the administrative and financial transactions required to file a patent with the patent office. The freelance attorney will do the majority of the work for you but there will be tasks such as signing of documents, paying of fees, creation of accounts, submission of documents, faxing, photocopying, emailing, and so forth that will require your involvement. Freelance attorneys do tend to be cheaper than small firms and big firms however, as you are essentially taking on some of the tasks that would otherwise be done by the small and big firms.”
nepchin: “Brendan it is a pleasure to have you talk about IP today and we learned a great deal.”
Brendan: “It’s been my pleasure Lap. I love talking about IP, and as usual rambled on for too long. Thank you for having me.”