Counsel to Counsel - September 2008 - (Page 15) perceives,” says Saul Ewing Partner Stephen Driscoll. “They may even disclose the invention at a trade show. If they get a bite, they think about patenting it. Generally speaking, the invention would be almost finished before the patent lawyers get involved.” By the same token, there are plenty of patent attorneys standing on the sidelines, waiting for the next invention disclosure. But by the time a product is in production, it’s often too late to get ahead of some key issues. Even in large companies with robust IP capacity, where inventors diligently file disclosures that are routinely evaluated by counsel, the model assumes inventors understand the business potential of their inventions as well as the full spectrum of IP issues. An effective IP strategy is not just securing the patents you can, but protecting the technology that gives you a competitive advantage, blocks your key rivals or opens new markets. Conducting invention-capture sessions at the drawing-board phase allows the intellectual property and the technology to evolve together, with long-term goals clearly in mind. “Companies have to investigate their freedom to operate,” Driscoll insists. “That means going out into the market to determine any other IP issues that may interfere with implementing your new invention. The cost of pursuing a product that you ultimately can’t exploit due to a freedom-to-operate issue is far greater than the attorneys’ fees.” Moreover, the sessions have a way of cultivating relationships and inspiring participants. “Invariably people leave an inventioncapture session charged up,” Driscoll says. “The inventors get affirmation that their work is patentable. People are excited to protect what they have.” “Invariably people leave an inventioncapture session charged up. the inventors get affirmation that their work is patentable. People are excited to protect what they have.” “A lot of my job is to keep them informed on changes that have occurred in U.S. patent law and the effects of significant decisions out of the Court of Appeals for the Federal Circuit, and elsewhere,” he says. “They don’t follow it like we do.” For companies with large portfolios, innovation-capture activities can be paired with IP audits, so that at the same time you create new patents that are a good fit for the company, you can also cull older ones that may become outdated or redundant. “A patent lives for a long time,” says Gregory Bernabeo, a Saul Ewing partner. “Every four years you have to pay maintenance fees. If you can weed out the patents that no longer have strategic value, there is a cost savings.” Still, the primary benefit of an early joint effort is in crafting better patents for the future. “If we’re doing our job, we have a solid understanding of the business, who the competition is, who we want to exclude and how our competitors might impact us,” he explains. “We generally want to prepare the patent application in a way that is targeted at the competition. Some early-stage clients may not know what the critical aspects of their IP are. That’s where we have whiteboard sessions that can really shape a strategy. We can identify the parts of the business’s technology that could be critical because they would block out the competition.” Those sessions pull together various elements within the company that may not otherwise interact: inventors, sales, marketing and the executives who guide the company’s big picture goals. Add counsel with a deep understanding of all facets of IP protection, and you can guide a product to market that is smarter, better targeted and more effectively protected. Bernabeo tells of a textbook whiteboard session that really paid off. He met with a new startup on the very day the company moved into its offices. The founders had a clear strategy in mind: They wanted to be acquired, and they knew exactly who they wanted to acquire them. Together, Bernabeo and the client created patents that both protected critical IP and were tailored to the target company’s needs down the road. A highly specific plan, but did it work? “Within two years,” Bernabeo concludes, “they were bought by the company we discussed in that first session.” Saul Ewing LLP is a full-service law firm with more than 250 lawyers in nine offices in Pennsylvania, Maryland, New Jersey, Delaware, New York and the District of Columbia. The firm serves businesses throughout the united States and internationally, including recognizable names in corporate America, exciting startups and an array of closely held and privately held companies, as well as nonprofits, governmental and educational entities. Article Participants: Gregory Bernabeo Partner gbernabeo@saul.com Stephen Driscoll Partner sdriscoll@saul.com Theodore “Ted” Naccarella Partner tnaccarella@saul.com Mark Simpson Partner msimpson@saul.com Up to Date Other types of early strategizing can also pay off. Saul Ewing Partner Mark Simpson often briefs international clients on the U.S. market. www.martindale.com/c2c SEptEmbEr 2008 15 http://www.martindale.com/c2c
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