Friday, October 3, 2008

Inside IP Law

The next great idea is only just a start

By James M. Connolly

Bringing a great idea out of the lab is only step one for an aspiring entrepreneur. Next comes the effort to protect that intellectual property, assuming, of course, that it really is a new idea.

There are plenty of potholes waiting for inventors who face risks such as hard work on an idea that someone else may have already patented, mis-timed patent filings, poor documentation of a patent application and inadvertently letting a friend or coworker share in the fruits of the idea.

Attorney Beth Arnold was trained as a molecular biologist but turned to the law so she could work with a broad range of technologies and help bring products to market. She has been focused on intellectual property law for more than 20 years, the last 13 with the Boston firm of Foley Hoag LLP. She identified some best practices, and big mistakes, that may be crucial for an entrepreneur.

“The first thing to do is to understand whether it’s an idea that is patentable, and that goes to the question of whether something really is new,” said Arnold.

 That process may start with online keyword searches by the inventor for prior patents if their tech sector offers a good selection of technical papers. While the inventor may have to decide whether to enlist an attorney for their search, they also must decide when to file a patent application. Arnold noted that in a highly competitive market, the inventor may not want to wait until the idea is fully fleshed out and documented. “Sometimes you just want to file to get a filing date and do your searching later,” she said.

Arnold warned that while U.S. laws allow an inventor one year of patent protection from the time they “disclose” their research in a venue such as a technical paper until they actually file their application, laws in other countries may allow a foreign competitor to jump on the idea once it has been published. That leads to another key bit of advice from Arnold.

“You really should be hesitant about talking to too many people about it. You could tell it to someone and they could go file before you,” she warned. If the inventor is going to discuss their invention with a friend or coworker at the search stage or in shaping the idea or lining up funding, there should be a confidentiality agreement. In addition, the inventor needs to guard against working too closely with peers on ideas, or the coworker could stake a claim as a collaborator, she said.

Often inventors are put off by the cost of a patent, Arnold said, particularly for a complicated technology. “The cost associated with a patent application is really in developing the idea. The patent attorney takes the idea and fleshes it out and translates it so no one can design around it,” she said. As with most legal activity, attorney time spent on a project means cost. Yet, there are ways to minimize hours and costs.

Communication is key, with the inventor helping to think through the invention and prove that there is no equivalent, patented technology. She said that in selecting a patent attorney, “You want to have someone you have a good rapport with, and someone who is an expert in your technology area.”

Getting a patent can be a race, “so you want someone who has the same sense of urgency that you do, and someone who will be available to you,” she said.

Word of mouth may lead an inventor to a good attorney, but Arnold also advises inventors to look at larger firms that have dedicated IP law practices. “There’s a skill that the attorney brings to the table, but there also is a lot of administrative and support work involved in patent law,” she said.