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Use of Project Status Reports for Patent Application Deadlines

Wed, 06/20/2012 - 5:01am
Keith Haddaway

Clients new to intellectual property management and patenting frequently comment that the patent application process is “puzzling” especially with respect to timing and the amount and type of information that should be included. Particularly in smaller or newly formed organizations, patent professionals are often asked to address issues such as:

  • “We have this idea for a widget that does X, how do we know if we should patent it?”
  • “Project Y has been moving along for a while, do you think we have enough information for a patent application? What do we still need to do?”
  • “We would ultimately like to patent four related ideas, but we only have one that is ready to go right now. Should we wait until all four are ready to file an application or should we file them one at a time?”
  • “Development of a system that uses our widget will be complete in 18 months, but we have ideas for some components now. When and how should we proceed?”
  • “I know that I should fill out an invention disclosure form of some sort for this idea, but the form asks for a lot of information and I just don’t have time.”

These are all valid concerns, and a person or organization less familiar with the patenting process can easily find themselves lost. A lot of the mystery can be alleviated with efficient internal tracking in conjunction with consultation with a patent or IP (intellectual property) attorney to arrive at informed decision making.

For many organizations, efficient IP management can be achieved through a patent or IP committee that meets on a regular basis. One function of an IP committee is to identify core technologies for focused development and to assess potential commercially viable options. The committee can discuss developments and determine which should move forward and when. Ideally, the committee should include individuals from engineering or science, sales, business development and legal, such as a patent attorney, as well as executives or managers.  An IP committee meeting agenda may include review of related business and technology developments, and making decisions regarding new and existing patents, trademarks, trade secrets, etc. The committee may also track competitors’ developments. IP management may also include financial incentives to encourage inventors to submit invention disclosure forms, which typically require a fairly detailed description of the invention as well as some analysis of the state of the art and how the proposed invention improves upon the art.

While the patent committee model can work well for larger organizations, it is often not practicable for smaller entities. For one thing, the CEO, manager, business development team and sales person may all be the same individual! There may be only one or two engineers/scientists (who could also be the CEO/manager/sales person). Also, while it is beneficial, if not essential, to include an IP attorney in regular meetings, this may not be realistic for a company that is too small to have inside counsel or unable to afford attendance of outside counsel at all meetings. Regular meetings with IP counsel should still be held, but more efficient use of counsel is possible when the organization internally tracks the status of ideas and projects to evaluate and direct development. Project status and updates can then be transmitted to IP counsel, and meetings with him or her can be conducted in a focused and streamlined manner. Counsel can help guide the priority and timing of experiments and developments toward the goal of perfecting IP rights, whether through filing a patent application, retaining information as a trade secret or taking other appropriate action (including dropping a project). At least quarterly meetings with IP counsel are advisable.

Proper goal setting and strategizing require good internal IP tracking procedures. There are two main goals for an internal tracking system: (1) organize thoughts and gather sufficient information in real time to evaluate which projects should move forward, and (2) track projects to ensure that timelines are maintained and deadlines are met. For information gathering and evaluation, questions to be addressed include:

  • What is the technological basis? Is it commercially viable?
  • Does this technology/IP fit into the overall business plans and goals? Is it related to a core technology?
  • What information is needed to aid in the decision making process?
  • What other information is in the field?
  • How is this technology best protected?
  • Who is in charge of the project?

With respect to project tracking, information to maintain includes:

  • What information is needed to provide sufficient disclosure for filing a patent application?
  • What are the deadlines and how will they be met?
  • What upcoming events (presentations, meetings, publications, etc.) need to be considered?
  • What general and specific actions are required to move to completion?
  • What is the status of related projects? Can they be integrated?
  • What steps are needed to develop a project that can lead to a first sale? Is there any way to hasten the process, for example by introducing an intermediate or less refined product?

As information is developed, it becomes the basis for deliberate and tactical discussions with IP counsel. Such discussions can lead to additional questions and revisions of outlines so that strategic decisions can be made, projects completed and rights perfected. These same or other tracking systems can be utilized for making decisions on existing IP, such as actions to be taken in pending patent applications, patent and application maintenance fees and annuity payment decisions, and maintenance of trade secrets.

Presented below is a general outline that can be used for internal tracking of projects and developments. These documents are intended to facilitate decision making and information collection. Following the general outline is a status report for a hypothetical organization:

PROJECT STATUS REPORT OUTLINE
Title: Working Title or Project Title
Last Status Update: --/--/--

Brief description:

  • What is the project goal?
  • What is the developmental status?
  • What is the goal for commercial application?
  • How does it relate to business and IP strategy?
  • Who are the main individuals involved?

Status:

  • What is done to date?
  • What are the related agreements/technologies?
  • What are the most recent items accomplished?

General Action Plan:

  • What experiments or information gathering is ongoing that is required for next steps?
  • What information needs to be accumulated for project completion/preparation of patent application?
  • Timeline

Action items:

  • Specific next steps to be taken.
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