The protecting phase includes the legal processes for creating a patent application, filing in the appropriate jurisdiction and prosecuting the application through to the grant of the patent. Since these are primarily legal processes and will be taken care of by the IP attorney, we will not delve further into them.
Other processes that are considered in the protecting category include trade secret policy and process, defensive publications and product clearance (Figure 1). Many companies say they have trade secrets, but have failed to establish either a written trade secret policy or a trade secret registry, and do not provide training to their employees on how to protect trade secrets. Enforcement against trade secret theft can be difficult without these processes. Employees need to understand how to protect trade secrets with the appropriate secrecy non-disclosure agreements with third parties, proper confidential document marking, etc. Having a trade secret registry will keep the identity of this important intellectual property fresh in management’s mind so that they can manage the trade secrets.
The use of enabled, defensive publications can be a cost-effective way of protecting Freedom to Operate by denying patentability to others. Key to the efficacy of publications is the enablement of the invention. The description of the invention must be in sufficient detail to keep competitors from easily inventing around the publication subject matter. Enabled publications may be very useful for improvement inventions or as a competitive response. Figure 2 illustrates how technical publications can prevent issuance of patents by defeating the novelty or non-obvious requirements.
Every company introducing new products to the market should have a robust product clearance process. This process can include, under the IP attorney’s direction, sufficient analyses of the technical features of the new product versus the patent art. The goal is to reduce the business risk of commercializing new products. This process should be integrated with the new product development process and the new business development process.