The Role of the Patent Engineer

• 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: 189-218

189

It should be apparent by this time that patents can be extremely valuable to

your company . Besides protecting your intellectual property that gives you

a competitive edge in the marketplace, patents should be considered a valu-

able product in their own right. In either event, patents are valuable only if

another company needs access to the technology claimed in your patents.

It is the need to gain access to your intellectual property that generates the

demand for your patents. If no one needs the technology contained in your

claims , your patents are not just valueless. Rather, as discussed earlier in

this book, they are expenses.  ey cost money to obtain.  ey cost addi-

tional money to maintain. And, they educate your competitors .

On the other hand, patents can prevent competitors from using your

technology to gain access to your markets. However, it is up to you to

enforce or assert your patents. No one else will do this for you.

Patents are worth money to you if other companies  nd that their

need for your patented technology is so great that they are willing to o er

something of value to you.  is generally occurs through patent exchange

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 e Role of the Patent Engineer

190 Patent Engineering

agreements *.  ey may license your technology and pay you fees.  ey

may buy ownership of your patent, thereby becoming the assignee . Or, they

may enter into cross-licensing agreements with your company , thereby

giving your company access to their technology.

Patents that disclose and claim a particular solution to a speci c prob-

lem can be quite valuable [1–3]. However, as discussed in Chapter 3,

solution-speci c patents are o en of far less value than ones that form part

of a portfolio that holistically focuses on solving or owning the entire prob-

lem. However, as also discussed, problem-speci c patent portfolios rarely

come about by accident. Rather, they arise by carefully generating and

executing a patent strategy designed with the goal of owning the problem

in mind.

Alternatively, as discussed in Chapter 10, patents owned by other com-

panies, or worse, non-practicing entities (NPEs ) can limit your ability to

sell your products . Such organizations may choose to deny you access to

technology that you desperately need, forcing you to either pay exorbitant

licensing fees or royalties or to have to o er them access to far more of your

patents than you would otherwise desire.

As discussed in Chapter 9, we live in a global economy and international

patents may be important to your business. Decisions have to be made as

in which countries to  le.  ese patent applications can enhance the power

and value of your portfolio . However, they also incur risks and expenses

that need to be carefully considered.

It is clear that, whether your company is large or small, well-established

and pro table or entrepreneurial and new, patents will impact it.  e e ect

can be positive or negative or both. Helping you navigate the intricacies of

patents for your technologies should be a patent engineer .

In this chapter, we will review and expand upon the role of a patent

engineer within your organization.

What is a Patent Engineer?

Typically an engineer or scientist, patent engineers need to have su cient

in-depth knowledge of your company ’s technology to allow them to con-

tribute to the technological development of your products . In addition

*  e reader is reminded that we generally use the more inclusive term “patent exchange

agreement ” instead of the more commonly used, but more limited term “cross-licensing

agreement ”, which is a subset of the former term.