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Archived updates for Tuesday, September 12, 2006

WIPO on Managing Patent Costs

In "IP and Business: Managing Patent Costs," World Intellectual Property Organization Magazine (September 2006) suggests being clear about your IP strategy:
An important first step is to put in place a clear and focused IP strategy that serves the overall strategic objectives of the business.Patent applications should not be filed for every patentable invention. Such a strategy could send patenting costs spiraling out of control. Businesses should only obtain and maintain patent protection on inventions that will bring sufficient commercial or strategic benefits. Trade secrets and defensive offer alternatives to patenting that have a much lower cost than patenting publication (see WIPO Magazine articles "Trade Secrets Are Gold Nuggets: Protect Them," Issue 4/2002, and "Launching a New Product: Freedom To Operate," Issue 5/2005).
On managing patent costs, they also acknowledge that

A patent application drafted and prosecuted without professional assistance will
save on drafting fees, but risks resulting in a poor quality patent, which lacks
the well-drafted claims necessary to cover all the key business applications.
There is little point in being "penny wise and pound foolish" when it comes to
patent applications covering inventions that protect the core competencies of a
business. However, the national or regional patent office may have a list of
reliable local patent agents, attorneys or IP law firms that provide pro bono
(free) or reduced rate IP services, including the drafting of the first patent
application, to a new client or to a first time applicant. Ensuring that all
pertinent information is provided from the start to the patent drafter will also
save time and money.
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