Patent Strategy

Introduction

Developing a coherent patent strategy involves both art and science, short- and long-term thinking and an understanding of both patent and business imperatives.

When you come to DSL Patents with one or more inventions, we will, as most patent agents, help you identify in what jurisdictions / regions to file a patent and in what order. Where we believe we stand out from the crowd is in terms of assisting you to the overall strategy to employ with your invention(s). This strategy may include some or all of the following:

  • how you intend to monetize your inventions
  • how much you should budget for your patent portfolio
  • perform competitive intelligence including identifying key competitors, inventors and/or technological innovations that you may not be aware of
  • how and when you should proceed to file patent applications.

We do this through a proprietary and innovative program that we offer to select customers called Outside In-HouseTM. If you or your company qualify for this program, we offer a service that will revolutionize how you relate to your outside patent professional. The program consists of assigning one of our professionals to your company to coordinate with you in three separate but related aspects.

Free attendance at Progress Meetings

The first aspect relates to our professional coming on-site on an approximately quarterly basis, to attend your internal progress meetings, completely free of charge to you. This will allow our professional to learn the nature of your business, your terminology and your product offerings and their roll-out schedule. As well, this makes us available to you, if you need it, to consult us on IP-related matters (at which point we will start billing our time). We have found that this aspect of the program greatly reduces the learning curve, at no cost to our qualifying customers, allowing us to prepare their patent applications more efficiently, with a greater likelihood of being correct and at a greatly reduced cost. Additionally, when we become aware, through our participation in these meetings, of an anticipated product roll-out (which may cover certain previously submitted invention disclosures identified in the second aspect of the program) we can coordinate with you immediately to confirm if this is the case and to obtain instructions to proceed with one or more patent filings in order to ensure that these inventions are protected before any potential disclosure through the product roll-out is made.

Patent Mining and Evaluation

The second aspect relates to patent mining and evaluation. In this aspect, we allocate to you, a dedicated e-mail address that may be used by your employees to submit invention disclosures that they think may be or should be patented. Our professional compiles these disclosures, contact the submitting employees and conduct an initial telephone consultation permitting the professional to sufficiently understand the nature and significance of the invention and summarize the invention in a document that will be the basis for a future patent application when we receive instructions (such as during an on-site visit described above) to prepare and file. Often, the initial telephone consultation provides sufficient information to prepare a first draft without further consultation with the inventor. In the interim, if it turns out that there is an imminent disclosure, we can very quickly and simply convert this summary into a provisional patent application.

As a corollary to this second aspect, we are available to meet with your staff to introduce them to basic patent concepts (including what would qualify as a suitable invention disclosure) and to whatever patent incentive program you choose to establish (we can assist you with the design, set-up and management of this as well) and to coordinate patent mining sessions with groups or departments within your company to kick-start your patent program.

Prioritization

The third aspect relates to prioritization. We maintain a database of your submitted invention disclosures (which by itself provides independent corroboration of when the invention has been conceived) and triage your disclosures in terms of patentability, licensing or other monetization potential, and provide recommendations as to filing strategy. Then, in consultation with your principal decision-makers (for example, CFO, CTO and Sales Director), and bearing in mind your established budget, we can established a staged schedule of patent filings that permits you greater certainty into the patent budget, with a longer runway, and allows us to prioritize our ongoing projects to ensure that the schedule can be met. Often, our clients ask us to coordinate such consultations with the professional’s on-site visits in the first aspect of the program.

Our clients have found that the second and third aspects of this program in particular, provide a particular benefit to them, because it frees its key decision-makers from the process of regularly meeting to evaluate, prioritize and make filing decisions regarding submitted invention disclosures. When these tasks are attempted in-house, our experience has been that any program directed to this end quickly founders, because the people involved in making these decisions are also the people with responsibility for much of the company’s business affairs and as such, with the least available bandwidth to deal with this important but time-consuming task.

Please contact us if you are interested in this program and to see if you and your company qualify.