Our firm builds an action strategy tailored to the goals of the entrepreneurial process and to the capabilities of the inventor, the entrepreneur or the company. In many cases, there are differences between one inventor and another, between one invention and another, and between one venture and another.
At our firm, building the strategy is supported both by attorneys experienced in the field of intellectual property and by attorneys, some of whom are also patent attorneys, with the support of a technical team of consultants.
When we build a strategy for the right process of protecting intellectual property, we first hold an initial brainstorming meeting and receive information from the inventor and the entrepreneur regarding the project, its goals and its budget. We get to know the people behind the invention and the venture, and we tailor the strategy together with the inventor.
The inventor’s budget of course has a considerable effect, but even an inventor with a relatively low budget can begin the process of protecting his invention at reasonable costs, without the need, already at the initial stage, to raise capital from external parties, who can be approached for fundraising at later stages if necessary.
The goals as well as the budget will affect the determination of the strategy for the intellectual property protection process. An inventor who does not plan his goals and budget correctly may find himself unable to continue protecting his intellectual property.
It is therefore important to consult on building the appropriate strategy, with all the legal aspects affecting the strength of the legal protection, with attorneys and patent attorneys, and not with all kinds of “know it alls” who are not licensed to practice in this complex legal field, and who may cause irreversible damage to the inventor.
The Main Characteristics of Building an Intellectual Property Strategy
What is the venture? What is being protected?
First, the venture as a whole must be understood: what the venture contains, and which legal actions must be taken in order to protect the entire venture. Sometimes inventors protect only the patent; they make a decision to protect the invention by a patent alone.
Sometimes there are unprofessional parties without any legal qualification who carry out searches for inventors and tell them, without any legal authorization, whether in their opinion a patent can be obtained or not. It is not advisable to rely on these parties, who have no license or qualification to give a legal opinion, which in many cases misleads the inventor, in order to justify to the inventor the cost of the search that found the patent.
In many cases, despite the positions of various search companies that the intellectual property cannot be protected, it can be protected by various intellectual property means, and also by a patent in various countries. As mentioned, this paragraph deals with what is being protected, so we will not elaborate on this matter here.
It must be examined whether this is an invention and what its nature is, whether it has novelty and an inventive step, or novelty only, in which case it will be suited to a different intellectual property proceeding compared to an invention that also has an inventive step.
It must be examined whether there is one invention or more, and whether there are special designs, names, domain names, a logo, a trade secret, texts, images, etc.
What are the characteristics of the applicant?
Sometimes the main protection by means of a patent may turn against the inventor. For example, the inventor has a partner and the patent application is filed in the name of both of them, or the owner of the invention is a company and the inventor is an employee of the company. For example, the inventor is a soldier in compulsory or regular service, a police officer or a doctor who receives a salary from the state. All of these can affect the inventor in exercising his right by filing a patent, and also after the patent is granted.
Therefore, in many cases appropriate agreements must be prepared between partners, between a contractor and the inventor, and between an employer and an employee, in order to regulate the ownership of the invention even before the patent application is filed.
For example, in terms of fees, there is significance to the name in which the patent application is filed, an inventor or a company, the amount of income of the patent applicant, the number of previous patent applications filed by the applicant, or the number of people employed by the applicant.
Characterizing the applicant and mapping his situation in certain cases affects the registration process and the expenses in the process of registering a patent and intellectual property. Incorrect mapping of the applicant’s characteristics can also lead to a registered patent that is granted being invalid, since the declarations and information submitted to the patent office were incorrect.
Moreover, the characteristics of the applicant of course depend on his budget; in many cases an inventor does not have the budget of a commercial company.
The Applicant’s Budget and Goals
Of course, the applicant’s budget has a short term and long term effect. If this is an inventor with a low budget, compared to a large commercial company with large budgets, we will build the strategy differently.
In many cases, expenses can be postponed through informed use of the various intellectual property treaties, and by filing different types of applications.
For example, when the budget is low, it is possible to file a provisional application or a patent in one country, and through the Paris Convention, patent filings can be postponed by up to one year in some 175 countries.
In this way costs can be postponed, and costs can be postponed once again by means of an application under the PCT, which extends the date for filing patent applications in the various target countries by approximately a year and a half, and sometimes more.
In other words, by using the Paris Convention and the PCT, the date of patent filings can be postponed by approximately two and a half years from the date of the first provisional or patent filing, thereby postponing the costs of filing patent registration applications in specific target countries. However, there is a risk in this strategy that the invention will not yet be considered a registered patent, and potential competitors can copy and exploit it.
It is also possible to build a different strategy that shortens the time to obtain a patent. Today, by means of requests for expedited examination or green applications, it is possible to obtain patents within short periods of sometimes one to four months or more. If a registered patent is granted within a short time, the applicant receives several advantages.
First, knowing that the patent has been granted, at least in a first country, provides a kind of security for the future. Although a patent may not be granted in other countries, since each examiner decides for his own country, it is still easier for applicants to file applications in additional countries after receiving a positive response from at least one examining authority.
In addition, after a patent is granted, for example in Israel, it is possible to use the PPH agreements, which make it possible to accelerate the examination process in countries with which Israel has signed a PPH agreement.
The Term of Protection?
In certain cases, the owner of the invention wishes to protect his invention for the longest possible time and in the broadest possible way. For example, for a patent the term is twenty years from the filing date, and in certain fields an extension order for an additional five years may be requested.
However, sometimes it is enough for the owner of the invention to protect the invention more narrowly and for a shorter period, only for the novelty, for example. In this case, the invention can be protected in certain countries by a utility model for a period of 6 to 12 years.
For more details and building an intellectual property strategy, call +972-3-9711013.