Protecting Your Ideas - Why and How Should Strategies Differ



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Innovation begins with an idea. Ideas may or may not have commercial potential or there may not yet be a recognized market. What protection strategy should be considered? How does the corporate environment differ from the academic environment? The investment in time and money to protect, develop and market an idea can be huge. Therefore there is good reason to do a detailed analysis of the idea and its potential market before expending the money required to protect, develop and market an asset. Once this is completed and the decision is to proceed, then design a strategic plan in which intellectual property protection is included.

Market Assessment

Most inventors believe their invention will be useful and there is a market for their discovery. In addition, inventors usually want to make money when the idea is marketed. The key word is "when". It may be never, in a short time (1-3 years) or in a long time (4-10 years). Once a decision is made that a market exists or can be developed the owner of the idea needs to determine how to maximize asset value.

If the market is not well defined or recognized by potential consumers there may be a need to establish consumer awareness through, advertising, publication, sample distribution, surveys, etc. Increasing awareness and creating demand generally takes time, costs money and the possibility exists that the perceived market does not exist or is less than anticipated.

Once it is established that a potential product exists and its estimated value has been established the inventor must decide whether or not to develop the product themselves or license the idea/product to someone else for development and/or marketing.

The bottom line is that inventors want to establish, to the extent possible, that a market exists for the new idea or product before investing all of the money required for licensing, protection, development and marketing the new product.

Numerous factors affect asset value; however, in this article emphasis is on strategies related to intellectual property protection, specifically patent activities.

No Market Potential

Corporate or Academic inventors might decide to publish their data; hence the discovery will be in the public domain and not patentable unless a patent application is filed within one year after public disclosure. However, if future research leads to improvements or revisions that are valuable and of interest to the public, the improvements or revisions could be patented by the original inventor or by others who generate the improvements or revisions.

An alternative approach might be to keep the invention secret and continue research to establish or confirm efficacy and commercial or market potential.
Generally the academic community is interested in publication due to their focus on education and dispersion of information to the public. Therefore, the academic community is inclined not to maintain discovery or information as a trade secret. This may vary between the public and private academic institutions.

On the other hand, an academic institution tends to focus on discovery and education in which products, markets and market needs are not the major emphasis. Therefore, decisions on whether or not to patent discoveries are made very early in the R&D process and at a time when market potential is poorly defined. As a result, the decisions are risky and overall cost in the academic setting may exceed that required in a corporate setting.

Market Exists - time to market (<3 years)

If product value is high, market entry is expected to be within three years there may be good reason to seek patent protection as soon as possible. For example, if there is a good chance that competition will arise soon after market introduction or the owner of the asset decides to seek a licensee for the potential product an issued patent of even a patent application that is close to issue can enhance asset value when negotiating license terms. An issued patent will also provide a means to limit competition. A patent provides the owner with a 20-year period of market exclusivity commencing with the date the patent application is filed for the product that is defined in the patent claims.

If an international market exists the asset owner may want to apply for patent protection in foreign countries. In this case, it is also important to have the patent issue prior to or soon after market entry. The objective is to secure a proprietary market position and prevent competition. Of course, when selecting countries in which to apply for patent protection, it is prudent to also assess how well the respective country enforces patents and the market in that particular country. It could be a wasted investment if enforcement is poor or non-existent or if the market is small.

Once it has been established that patent protection is of interest in the U.S. or abroad, the patent preparation and filing activities need to be defined. Since, in this scenario, the objective is to obtain protection as soon as possible; it is prudent to establish that no prior art exists. If possible the asset owner should do literature and patent searches. Search results should:

1. make the asset owner aware of others working in the same area,

2. provide the inventor with new ideas for their invention, and

3. yield information with which to determine if a U.S. and PCT patent application should be prepared and filed.

The PCT patent application, in this case, will usually include all countries in which protection is sought. Even though numerous countries can be claimed in the original PCT application, the patent applicant can file for protection in select countries at a later date. During that time the owner or licensee can assess market interest in the product and define which countries have a market that justifies filing for patent protection. Filing the patent application can be delayed by as much as 30 months after filing the PCT application. The extent of the delay may depend on market entry, market size, cost, enforcement, U.S. office actions or claims allowed, licensee commitments, etc. On the other hand, if market entry is planned in foreign countries before introduction in the U.S. it might be prudent to file for patent protection in select countries as soon as possible. These strategies should be made in cooperation with Patent Counsel.

Market Exists - time to market (>3 years)

Many discoveries require further research, prototype and/or manufacture development, beta or clinical testing and/or regulatory approval before market entry. Time to market can be long and in the meantime the inventor may want to maintain as strong a proprietary position as possible since a significant investment in time and money will be needed prior to market introduction. A good patent strategy can contribute to the strength of the proprietary position.

One or more of the following patent strategies might be considered depending on the particular situation:

1. Establish the discovery date. Maintain good records in which data and discovery date are recorded and witnessed.

2. Prepare and file a provisional patent application (PPA). The PPA establishes the patent filing date if the regular patent application is filed within one year after filing the PPA. A foreign patent application must also be filed within the one-year period. This strategy leads to a one-year extension on the regular patent application; but there are advantages and disadvantages associated with the PPA that need to be considered and discussed with Patent Counsel.

3. Prepare and file a regular patent application. In some cases this may be preferred, especially if the asset owner wants to license the asset before market entry or if the disadvantages of the PPA outweigh the advantages for the particular situation.


In either situation above, the discovery might be kept secret. This decision will depend on such issues as; value of the asset, risk that secret can be kept, duration of secrecy, combination of protection methods, all or part of discovery to be kept secret, etc. If there is interest in keeping information secret be sure to understand trade secret requirements.

Also asset protection can encompass, patents, copyright, marks, and/or tradesecrets. In some cases the best protection might consist of a combination of protection methods.

Patent Counsel

Patent Counsel will offer advice and assistance with patent strategy. If the inventor is not familiar with patent preparation is usually advisable to have Patent Counsel prepare and file patent applications based on search results and the invention description. Even thought Patent Counsel prepares and files the application the inventor should complete publication and patent literature searches before approaching Patent Counsel. Remember any information the inventor can provide Patent Counsel will expedite the application process, reduce cost and add to the quality of the application.

Melvin J. DeGeeter, Ph.D
Guest Blogger