Monday, September 19, 2005

NAVIGATING THE PATENT MINEFIELD: In the latest EE Times, Carolyn Hayden writes an excellent article explaining how companies can take steps to avoid patent litigation during product development. The article gives some great advice on minimizing the chances of running into serious problems just as you are ready to unleash a new product on the market.

First and foremost, before beginning product development, set up employee agreements and be sure employees understand that their obligations are key. As employees move from company to company, they run the risk of IP moving with them. While having these agreements in place does not guarantee protection, it does provide a framework that allows everyone to understand their obligations to protect company IP.

During the product concept stage, the following steps should be taken:

  • Establish a patent "landscape" for the technology by identifying patents that the product could potentially infringe. Competitors (along with potential "trolls") should also be identified to establish the risk of potential action being taken regarding the technology. In this stage, it is also important to consider all patents, including those that could be applied across different technologies.
  • Perform a portfolio review to help understand the state of your patent portfolio in relation to your product plans. This would include reviewing patents for relevance to the product technology, how strongly the patents can be supported, the patents' life spans and whether the targeted market regions have been covered. With the results of the patent landscape and patent review in hand, a strategy for patent development and threat avoidance can be put into place.

To further protect the product development investment, any new technology related to the architecture of the product should be patented in the relevant markets. If design reuse is being considered, determine whether the design contains any third-party IP and the associated terms of use. Ensure that any terms that may have been accepted previously are suitable for the future product's plans.

This is an excellent article that I recommend to any start-up looking to establish a long-term portfolio. It even provides the following checklist, which includes considerations for open-source subject matter:

  • Put employment agreements in place.
  • Implement policies and procedures to protect your IP.
  • Maintain records, notes and archives of information related to the product.
  • Manage the patents within the company's portfolio.
  • Identify obvious and nonobvious competitors.
  • Patent novel ideas that are key to your product and its future development and target markets.
  • Obtain necessary licenses for any industry standards used.
  • If you are reusing any design, identify the existence of any third-party IP and obtain the appropriate licenses.
  • Before incorporating any third-party or open-source IP, ensure that the distributor of the IP is credible, the IP is clean, the distributor has the rights to distribute the IP and any needed licenses are in place.
  • Before sharing information with suppliers, ensure that nondisclosures and agreements are in place.
  • When outsourcing design work, the following steps are recommended:
  • Have appropriate agreements in place.
  • Ensure your IP is protected.
  • Clearly identify who owns the IP being developed.

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