Patent Survival Secrets

Posted about 3 years ago. 1 helpful vote



Make certain that you have absolutely completed your design to the maximum manufacturing advantage.

This insures that (1) your design is set to be manufactured at the lowest possible cost to yield the maximum profit, which, will give you, with an allowed patent the best combinational competitive advantage; (2) that no changes will be made to the design after the patent is filed (because after all, if your patent protects a sub-optimal version that is located at a less than optimal profitable area, and if the claims allowed are not broad enough to clearly encompass the optimum, you effectively have no patent protection AND a copy of your product as an infringing product which "brushes" the outer limits of your patent (because your patent is not centered on your product) is more likely to invite an infringer to chance litigation when a copy of your product doesn't lie directly under your patent. If you are not technically skilled enough to finish your product to this stage, I can provide


Apply for patent as fully as possible, with as many embodiments as possible.

Keep in mind who you are and match that with the practitioner preparing your application. Large law firms are for litigating and charging companies fees of significant magnitude. Choose a practitioner with a technical background which is not mismatched with your technology. If you have a chemical case, go to a practitioner with a background in chemistry and chemical engineering. If you have an electrical case, go to a practitioner with a background in electrical engineering. Most practitioners will suffice for a simple mechanical case. I acquired a master's degree in both electrical and chemical engineering so that I would be enabled for the most technical of understanding for the vast majority of the time. However, I know my limitations too-- if someone came to me with a complex gene splicing patent, I would send them to someone with a Ph.D. in Biochemistry, and there are more than a few


Immediately after you file, unless it needs to be kept secret, make a big splash with the media.

Immediately after you file, and unless the invention is such that you want to keep it a trade secret until you sell it, and especially if you are going to manufacture, pump out as many press releases to newspapers, radio, morning tv, cable, magazines, etc. as you can. 1000 pounds of press releases cannot be too many. This baby is only born once and its only news when its born. Free press is the best press. Buy patent insurance. Buy offensive insurance immediately on filing. Buy defensive patent insurance if you will manufacture.


Make a very detailed operating plan for manufacturing and selling the product whether you want to make the product or not.

Just before and right after you file, your operating plan should be so detailed that you don't care whether you manufacture or license since both paths will have an abundant amount of net present value in which you feel secure and confident. For manufacturing this includes a business entity, defensive patent insurance, commercial liabilityinsurance, trademark/advertising insurance and any other special insurance needed. Keep patent ownership sequestered so that if the business entity is lost through bankruptcy you will have a chance to retain the ability to continue business. Do not put the patent into an entity and never make any financial guarantees to the entity.


Optimize your tax benefits on licensing.

If you do license, make certain you use the tax principles above to create a sale and lessen your tax to the lowest capital gains rate, that you do not keep so many rights that the IRS would rule a "no sale" had occurred, and use the rule in the Associated Patentees case to boost your royalty by eliminating the patent purchaser/licensee's need to capitalize. License to make sure that you have the licensee's incentive to manufacture by requiring advance royalties against that year's sales. Consider a licensing sale to reduce the licensee's operating risk by only having to pay for units of production from which he benefits. I worked for and received an LL.M. in taxation primarily so that I could provide additional guidance to my patent clients who are just starting on their first project. By insuring that the correct steps are taken at the beginning, money can be saved later on, especially tax dollars.


Don't forget to file foreign where you believe that money can be made.

Within one year, try to license in all foreign countries in which you can attract licensees. Then apply to all foreign countries where you might have a chance to establish a market, or apply to all non-Patent Cooperation Treaty countries where you might establish a market in conjunction with the filing of a PCT application, all to hold open the possibility for foreign licensing as long as possible.


Keep the patent lifeline alive.

If all of your claims are allowed in the U.S., consider parallel prosecution including continuations-in-part in which you capture improvement and cause infringers to never have a "closed set" of a finite number of claims with which they can perceive as stable targets to "design arounde". Consider continuations cases to pursue and argue over broader claims not made in the first filing.

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