January 11, 2006

Patent Process and Resources- some practical steps to take

Posted in Innovation, management at 9:51 pm by scottmaxwell

I mentioned our Insight Development Forum in my last post. Another topic for our forum was patents. (I am becoming increasingly concerned with the patent system, but it seems that the pragmatic approach for most companies is to seek patents at this point.) I had a post on patents in my David vs. Goliath series, but continue to try to determine the absolute simplest and most effective approaches to resolving patent issues.

In December I was talking to a senior lawyer from BMC about the topic, and he told me about Wong Cabello, a boutique IP law firm, that has the kind of expertise and lawyers that have the right fit and expertise to help emerging growth technology companies with patents. I was originally introduced to Coe Miles, a Ph.D. with deep technology expertise and start-up experience. I had a great conversation with Coe, and thought that he would be a great guy to work on some of these issues with our portfolio companies, starting with a presentation at our Development Forum. Coe’s back went out at the last minute, so he asked his partner (and founder of the firm), David Cabello to present in his place.

I asked David to give the “101” of patents, as I was not sure what the common denominator was for the group (I also think that everyone has pre-conceived notions of IP legal issues which aren’t always correct). David shared his thoughts as well as some war stories from his days at Compaq.

My takeaways (filtering out all of the patent law issues and all of the traps and opportunities that good patent lawyers can tell you about):

David recommended two basic patent strategy points:

  1. Develop a strategy for pursuing patent protection. What are the core technologies that you wish to protect and why? Revisit this strategy periodically.
  2. Develop a strategy for pursuing foreign patent protection. There are a lot of countries (read more costs!). Where are your major competitors and where is your customer base. Revisit this strategy periodically.

I particularly liked several of David’s very practical steps for managing the day-to-day patent process:

  • Give incentives for each member of the development staff to submit short “invention disclosures” that describe the problem, the solution, and why the solution is novel. David suggested $25 or a dinner out for each disclosure. (I have also heard of larger companies having a quota for disclosures as well as patents…not sure which is best.)
  • Set up an IP group to review the invention disclosures periodically and decide which to move forward with. David pointed out that it will probably be budget that sets the bar for the number of disclosures to move forward with (assuming innovation in the company and an incentive to create the invention disclosures).
  • Do not bother reviewing third party patents (it will take too much resource and you won’t necessarily get to a meaningful answer).
  • Contact a good patent attorney to prosecute the patent application (Wong Cabello comes highly recommended).
  • A basic patent will cost about $8-10k if done regularly and if you build a relationship with the right firm.

I can easily see this process being executed at emerging growth technology companies without consuming too much in the way of resources.

The Wong Cabello group is very accessible and helpful. They are more than willing to offer up advice and come with great recommendations. Going forward, I will be offering up these process steps and Wong Cabello to my portfolio companies who are looking for help in this area…


1 Comment »

  1. […] Scott Maxwell (whose blog and mine use the same graphic skin) has a good post on patents, “Patent Process and Resources- some practical steps to take” […]

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