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PATENT COMPENDIUM
Protective rights functions
Strategic goal settings define the use and effects of protective rights in the economic everyday life. A perfect example for strategic activities in industrial property rights is the Japanese economy, which has analyzed the approach of different parties and learned from them. If this would be the case here, more inventions could be exploited, which are nowadays discarded because of missing economical goal settings.
The main function of protective rights is the granting of exclusive rights on exploitable, technical or design inventions. Furthermore functions are attacking, protection, motivation, reputation or financial functions which are applicable by themselves or in combination, or which aid the exploitation of the protective rights. The application strategy is also crucial, particularly what, when, how and where the application is made.
Attacking
The acquisition of protective rights on new fields of technology belongs to the attack function. Competing enterprises can be excluded from new technologies, the own position can be reassured and extended. Armed with these kinds of weapons, an enterprise can gain access to new technologies by licensing and back licensing, which would be impossible without the patent. The protective right becomes a trade item.
If the inventor can set the new technological standard with his patent, an economical success is easily achievable (Example: VHS-System). To do so, many ways exists, for example, has the invention something to do with environmental issues which leads to more energy efficiency or less usage of substances of toxicological concerns, an environmental association should be contacted. This could lead to broader public acceptance. If the invention has something to do with security issues, insurance companies could be an appropriate partner.
Protection/ tactic
In order to achieve a safe position, it is crucial to file the application of protective rights in a timely manner that all aspects of a product, intermediate product or procedure are covered and that consecutive applications are filed to widen the scope of protection. An ongoing technological diagnosis helps to reveal the own gaps and gaps of third parties.
For reassuring a basic patent for example, a net of different patents is built around it, to prevent it from workarounds or to protect new forms of usage. Does the competition own the basic patent, the patent net can be used to prevent the competitor from using his own patent. Gaps can be closed by acquisition of patents and licenses.
The patent owner profits from the 18 months between the application and the publishing. In the case of a dispute, parts of the patents can be used for a „cross-licensing” to settle the case and to gain access to new technologies.
Motivation
In human resources, patents can be used so that employees identify more strongly with their company. If an employee or a quality circle has presented a development that the company has registered as a protective right, the employee realizes that his suggestions are taken seriously. If this is a technical protection right (patent or utility model), the inventor is even entitled to separate remuneration in accordance with the Employee Inventions Act, the so-called "inventor compensation" (EVG).
Reputation and financing
Not only in the case of startups, have protective rights signaled technological strength or a positive attitude towards research and development. Also for acquisitions of customers or loans is it an advantage to have, as long as the credit institution or venture capitalist can tell the worth of the protective rights, for example by presenting a business plan. The market position of a company or its trademark can be strengthened, if the protective right can be used in a product during its runtime. This can automatically improve the success of the company. Through licensing or transfer of the protective rights where applicable in combination with joint venture or franchise contracts, these can become major sources of income.
Filing strategy
Each of the prior listed functions fail, if the applicant isn't sure about what, when, how and where to file an application. For this purpose, the company should designate a decision-maker who is independent from the inventor. Before the application, the horizon of expectation of the protective rights should be clear. An unclear or to wide set goal leads to an outcome which does not fit the expectations and causes unnecessary costs.
If the goal is set, the next step should be to figure out, how to acquire intellectual property. With the exception of the accidental protectable discovery, intellectual property results from focused development by the use of creativity techniques. The competitors or different protective rights can lead to workarounds that will help to preserve a market advantage. Most of the time, one component is not enough to protect a whole development, therefore the farsightedness of the inventor is required to find the right approach and main focus of the own development. The inventor has to ask this himself continuously during the application filing on how to benefit from a competitive advantage.
Self -development is preferred instead of foreign –development, experience shows, that this takes part in choosing the right point of time for the application. On the one hand, to gain priority an application should be filled as soon as possible. On the other hand, an application of a development in an early stage could lead to the wrong protective scope.
Does the idea belong to a new field, a closer look to the openly published developments of competitors is recommended. It not only prevents the inventor from thinking analogous to the competition, but it helps to evaluate the own invention better, too. Furthermore the inventor can be saved from infringing third party protective rights. These rights and the state of the art need to be examined beforehand. The patent classification as well as the public patent information center and online services can help to find the necessary information.
Under some circumstances, an invention should better not be filled. The exclusion right comes always with the publishing of the intellectual property. It could make sense to keep an invention secret, as long as the competition can't easily recreate the invention. There is a trade of between publishing an invention while using it exclusively or keeping it secret, which must be considered.
Are the first steps clear, the question arises where to do the filing. This depends on the field of the invention, the stakes of the company at the moment and in the future, planned expansions as well as on economic aspects. A worldwide protective right seems useless for most of the inventors. Important are the markets with chance of growth, where competitors can be blocked or marketing advantages can be achieved.
Protection right defense
A part of the strategic approach is to take actions against rights of third parties. Therefore a complete documentation of the own development is necessary, to verify the own state of the art. Equally important is the decision, if objections are raised against patents or only particular claims. Occasionally, it could be better to work out an agreement of joint use or blocking the market access to third parties instead of raising objections.
Patent analysis
The evaluation of patent data becomes increasingly important for the exploitation of protective rights. It is possible to gain an overview of a development status of a specialized field or its direction by examine patent data. Competitors or newcomers can be identified. One possibility to do so is the patent citation analysis, which shows where the protective rights are cited and which protective rights it cites itself. If this analysis is done for all the cited protective rights, you gain a market overview, which shows licensing possibilities and also violators of own protective rights. Depending on the patent portfolio, this task could be rather complex and not possible to solve without the required expertise.