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Peter Hoeller is a seasoned patent attorney with more than 15 years of experience procuring, litigating, and licensing patent rights in the high-tech industry. He represents businesses of all sizes, ranging from the Fortune 100 to start-ups, and helps his clients realize the potential of their IP assets—either in court, before the U.S. Patent and Trademark Office, or across the negotiation table.


Peter Hoeller

Peter Hoeller

Barta, Jones & Foley, P.C.

To patent or not to patent? Do companies need an IP strategy?

Securing IP rights is important for any organization wanting to maintain the competitive advantage of their inventions, designs, and creative work. When implemented correctly, a robust intellectual proper-ty (IP) strategy will promote innovation activities throughout the company while also generating valuable assets that are usable for licensing and keeping competitors at bay. The largest technology companies generate billions of dollars in licensing fees from their patents. More importantly, they have patent portfolios that make their competitors think twice about entering into a particular technological field, which gives them a huge business advantage.
I challenge the reader to first think of IP assets, not in the dollars they make, but instead in the human capital they keep for you. Before starting an innovation program, every organization should initially settle on who is going to own the ideas and inventions that come out of such endeavors: the company, the individuals, a third party, or some combination thereof. These ownership stakes need to be clearly defined through employee or joint-development agreements. This is mission-critical to making sure an organization’s innovation does not walk out the door. It will also help generate more innovation. You get what you track. Having a system set up to secure rights to inventions invariably leads to more inventions. If inventors know they cannot leave with their inventions, they are more prone to stay. Also, many engineers like the recognition of seeing their name on a patent or company awards that honor their patents, so you will often find that a natural bi-product of any IP strategy is the retention of key innovators. Once ownership is figured out, an organization must decide what kind of IP to secure.
The most popular IP rights to protect innovation are patents and trade secrets. Patents disclose inventions to the public in exchange for granting their owners the exclusive right to stop others from making, using, or selling the disclosed inventions. If someone is using or selling a patented invention, the patent owner can sue them for patent infringement and stop the infringing use, retrieve profits the company has lost, or possibly seek punitive damages to teach the competitor a les-son. Though, one does not always need to sue to generate income from patents. The patents themselves may be licensed to third parties and used to generate substantial licensing fees. This is particularly attractive to companies that are lacking the ability to widely release products and are willing to license their technology to others. Licensing revenue can be a huge revenue source for sophisticated companies [ ... ]


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