Background for Developing and Implementing a Patent Strategy

• Author: Donald S. Rimai
• Profession: Recently retired from Eastman Kodak where he worked as a researcher and intellectual property manager in digital printing and adhesion science
• Pages: 1-16

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Why Should You be Seeking Patents?

You are a scientist or an engineer working for a corporation. e tech-

nology that you are developing is very exciting and quite novel and the

resulting products should allow your company to outcompete its competi-

tors. It does not matter whether your company is a so-called “high tech”

rm, whether you are involved in biomechanical technology, life sciences

or pharmaceuticals, or the development of more mundane products such

as the gears or tools. e issues are the same. Your technological advances

need to be protected.

You are an entrepreneur who has invested your life savings, aer also

obtaining nancial backing from principal investors, into your company

and are hoping to see the value of your company grow exponentially. You

are, of course, worried about foreign companies pirating your products

and, because of their lower labor costs and the fact that they have not

invested heavily in R&D or in developing the markets, they may be able

1

Background for Developing and

Implementing a Patent Strategy

2 A Guide for Implementing a Patent Strategy

to produce comparable products at substantially lower cost. You need to

prevent that, while increasing the value of your company.

You are an innovator who develops neat and novel products in your

garage or basement. You are hoping to make millions of dollars from your

innovations by producing and selling the products directly or by convinc-

ing an established company to produce these products and pay you royal-

ties. However, your proposed products are so unique that you are worried

that another company can simply steal them. Aer all, they can be easily

reverse engineered. Concerns over how to protect your innovations keep

you awake at night.

While the three specic scenarios presented here dier in many aspects,

there are still underlying similarities. Let us address both the similarities

and the dierences by rst focusing on the scientists, engineers, and other

technologists who are employed by companies, as these individuals have

certain benets in obtaining patents.

Why Should an Employed Scientist or Engineer Seek to

Obtain Patents?

e obvious issue faced by most scientists and engineers is that they are

assigned complicated tasks as part of a project team by their managers.

ese projects have tight schedules and market windows open and close

rapidly and a delay in introducing a product can be very expensive. In

addition, scientists and engineers are generally much more procient at

solving technical problems than they are at writing detailed descriptions

of the problems they have solved and how they have solved them. is

becomes even more pertinent as the resulting documents will be intended

for a legal, rather than a technical audience.

Despite the pressures placed on these individuals, there are very good

personal reasons for them to pursue the obtaining of patents. e benets

to the employer are similar to those of the entrepreneur and, accordingly,

will be addressed in the next section of this chapter. Suce-it to say is that

innovative companies should have good patent portfolios, as discussed in

Patent Engineering [1].

In years past, an engineer or scientist might have served one employer

throughout a long career. ose days are gone. e average tenure at a

company today is approximately ve years and scientists and engineers

need to constantly think about their next employer. Most of us who have

worked in industry have signed nondisclosure agreements whereby, typi-

cally, we have agreed not to disclose company information for a specied