In intellectual property management, mistakes can be extremely costly, and are, unfortunately, easy for an IP manager to make. The stakes are high: these could cause your company to lose its intellectual property (IP) rights, or worse, may result in competitors obtaining those rights.
Here are the Top 10 IP management slip-ups that can increase these threats to your company:
- Failure to capture an invention With the “America Invents Act,” the United States converted to “first to file” from “first to invent.” Unlike the olden days, the first one to file a new invention—not the first to invent it—gets the rights to the patent. If one of your inventors has a patentable idea and you don’t find out about it, you risk having a competitor file ahead of you. Your company can also be excluded from using the invention, which may be a major setback.
- Failure to meet statutory deadlines Once you begin the patent filing process, you must meet strict statutory deadlines to file abroad and respond to communications from the patent offices. These include conversion to non-provisional status, application filing deadlines and national filing deadlines. Miss these dates and your patent rights disappear.
- Failure to Stay in the Loop Are there IP related conversations and actions happening in your company that you are not aware of? While you may be diligently tracking your activities, your inventors, attorneys or outside counsel could be taking actions (or not taking actions) that you need to know about. Things can easily fall through the cracks if you are not tracking them or in the loop. This may result in expensive mistakes and potential loss of patent rights.
- Failure to Accurately Project Costs There are costs associated with building an IP portfolio, including outside counsel fees, filing fees and maintenance fees. Your IP program can be adversely affected if you cannot accurately project what these fees will be and budget accordingly.
- Failure to respond to patent trademark office actions on time During prosecution, your patent applications will receive communications from patent offices. Either you or your outside counsel must respond to these on time. Failure to take timely actions, can lead to expensive penalties and/or loss of rights.
- Failure to properly disclose material information In many countries, including the U.S., you are required to file information disclosure statements that include all relevant prior art. These statements need to be consistent across all of your related patent applications. Failure to make proper disclosures can result in the loss of your patent rights.
- Failure to maintain your patent In most countries, you must pay regular maintenance fees for issued patents or annuities for pending applications. If you miss making a payment, are delinquent, or if a payment is not properly processed, you can lose your patent rights or may have to pay significant penalties to restore your rights.
- Failure to enforce license obligations If you have licensed patents to others, you need to monitor the agreement and track the royalty payments. Failure to do so can result in significant loss of royalty revenue, and unlicensed use of your IP.
- Failure to align patent portfolio to business needs Over time, your patent portfolio will grow. At the same time, your company’s business strategy may change. You need to monitor your portfolio to make sure it is aligned with your business needs. Maintaining a portfolio of low-value patents that doesn’t support your business strategy is a bad investment.
- Failure to account for your IP portfolio For companies with SEC reporting obligations, it is mandatory to accurately disclose your patent assets. If you don’t have an accurate picture of your actual portfolio, you will encounter costly and embarrassing legal problems.
As the IP manager, you are responsible for seeing that these failures don’t happen. While this is a challenge, it is one that you can meet by working closely with your inventors and outside counsel. You must also be very careful to track events in an IP calendar.