We all hope to get back to normal sooner rather than later. Although nobody knows when exactly that will occur, it is reasonable to believe that, once it does, for many businesses, it will be like horses out of the gate.
In the meantime, there are some intellectual property priorities that companies still need to address. While some of these tasks may seem mundane and postponable, they are essential to remaining competitive, and to securing continued growth and opportunity.
Prioritize Your Patent and Trademark Filings
Use this opportunity to look inward and examine where you are with the development of your technologies. You may be in a good spot to file new patent or intent-to-use trademark applications.
Once the pandemic is under control, business will likely require long-delayed travel, client meetings, and so on. When that happens, your engineers, designers, scientists, and other technical personnel will be busier than ever. But for now, consider redeploying some of their time in a strategic way.
With some companies, I often recommend that such internal experts draft their own first draft patent applications. Although the draft I receive often requires significant editing, creating that initial application allows the inventors to hone in on what they have truly invented, and often forces them to consider options for variations of the inventions they had not yet considered. It also, of course, saves some legal fees.
And because patent and trademark applications at the U.S. Patent and Trademark Office (USPTO) are generally reviewed in order of their filing, the sooner they are filed, the sooner they are substantively examined. So, prepare your applications now and get them ready to file before everything is up to speed. When the pandemic ends, you will be very well-positioned against the competition with your IP applications already in.
Consider Provisional Patent Applications
To reduce costs in the short term, but still thoroughly maintain your company’s strategic position, consider filing provisional patent applications (PPAs) on developing technology.
Timing is critical, of course, but a PPA can be used by a patent applicant to secure a filing date while avoiding the costs associated with the filing and prosecution of a non-provisional patent application. A PPA essentially saves your place in line so that when you do go to file a non-provisional patent application within the one year time limit, you will have established a priority date for your patent. In addition, if a non-provisional application is filed within one year from the filing date of a PPA, that application may claim the benefit of the filing date of the PPA, giving the inventor the benefit of the earliest possible filing date.
While PPAs are just place-holders at the USPTO and do not get substantively examined, preparing a PPA now means much of the hard work will have already been accomplished, with the bulk of the non-provisional application in place. If a more robust application is needed (which it often is), adding to an existing provisional is much simpler than starting from scratch.
So draft that PPA now. I suggest you file it, too, but you need not do so, depending on where you are in the development of the underlying technology. But when you are ready to file, you will be ahead of the game.
Watch the Published Patent Applications for Your Market and Competitors
Focus on what your target market is doing, and what your competitors are developing. The USPTO published patent applications offer a treasure trove for forecasting those tech areas you care about, and for learning about where your competition is headed. Published patent applications can be searched easily — including by technical category and keywords.
While so many employees are home on their computers, harness this time to focus on this critical intelligence-gathering opportunity, and your product development and overall business strategy will be better for it.
Allow me to provide one quick example. A client is developing software and related products that will mesh with existing third-party infrastructure and internet-connected data applications. They need to monitor the published patent applications in the relevant USPTO technology centers to keep apprised of what new technology may be coming that could affect how their products can mesh with related technologies. That allows the client to adjust, if necessary, its product offerings and development to mesh seamlessly with new technology. It also allows the client to keep apprised of technology for which its competitors may be filing patent applications.
Consider How Remote Work May Affect Your Data Security
If you’re not already, you should be focusing on data security. With remote work, many employees are probably transferring lots of information, including confidential information, via email and other electronic means, over outside networks. That can lead to unexpected and unwanted disclosures of trade secrets and other confidential, prior art, privileged, or other information.
It is probably worth noting here that trade secret law protects not the raw data by itself, but the efforts the trade secret holder took to maintain the secrecy of its critical data. According to the Uniform Trade Secrets Act, the asserted secret must actually be secret, and must also be “the subject of efforts that are reasonable under the circumstances to maintain its secrecy.” Failing to make these required reasonable efforts can mean loss of the trade secret.
For instance, some courts have found, under certain circumstances, that not being diligent about maintaining secrecy of information (due to sloppy email protection protocols, for example) may fail the “reasonable under the circumstances” requirement. That results in loss of trade secret protection under the law. Or, allowing confidential information to become public may mean loss of the right to file for patent protection.
Focus now on how your organization keeps its secrets, well, secret. Determine how employees share information with each other and with outsiders — with vendors, counsel, partners, to name a few. The risks of information-sharing can be reduced by, for example, utilizing VPNs and secure FTP sites. Identify ways to reduce risks, such as by utilizing password-protected files in emails, and by ensuring employees delete all emails on their personal computers automatically after a short period of time.
Coordinate and Connect with IP Counsel
Companies should take the time now to connect with intellectual property (IP) counsel remotely to share topics, ideas, and concerns that have arisen or taken a different form due to the new realities. Or, just to keep counsel in the loop.
Remote work can hinder both collaboration and innovation, and connecting with IP counsel to identify opportunities can help foster both. Perhaps the simplest way to do that is to schedule regular phone or web calls with IP counsel to tackle ongoing questions, or to catch up on technical or other developments during these unusual times.
So often, clients call when they are considering filing a patent application, or believe that they are ready to file a patent application, not realizing that drafting a properly supported and detailed patent application can take weeks. Moreover, so often inventors do not understand that, once an invention is disclosed publicly, the inventor has a very strict one-year deadline to file a patent application on the disclosed subject matter.
There are, of course, caveats to this where an inventor might not even have a year to file an application. The law now grants the patent right to the “first inventor to file.” So, if another inventor files an application within that one-year period, that second inventor, as the first filer, has the right to the patent even though he or she was second to invent.
Many times clients have asked to file a patent application, and learn that their prior public disclosure — such as to a potential licensee or distributor — has started the clock ticking and that the filing deadline is very close, or worse, that they have surpassed the one-year limit. So, use this time to keep counsel informed. They can help guide you on all of the ins and outs of time-limit requirements and other legalities so you can focus on your business.
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The opinions expressed here are the opinions of the author and may not reflect the opinions of McAndrews, Held & Malloy, its clients, or any individual attorney. This is for general information purposes and is not intended to be, and should not be taken as, legal advice.
