Colorado Patent Lawyer Mark Trenner answers questions about your Patent Portfolio.

Link to Video: What is a patent portfolio?

Patent Attorney: Again, there is no sure-fire way to know that a patent can be enforced. But as the article notes, one important consideration is whether infringement can be readily detected. For example, if the patent covers a behind-the-scenes process, enforcing the patent will be more difficult than a patent for a feature that is readily observable.

Interviewer: Good points. What next?

Patent Attorney: The article concludes by suggesting the business owner formulate a strategy for developing their patent portfolio. For example, stronger invention disclosures may warrant higher budgets for preparing and prosecuting patent applications. Then of course, work with an experienced patent attorney that can consider all of this information when preparing the patent application, develop a comprehensive disclosure and claim sets. Then after the initial filing, follow-up with a continuing patent application strategy to capture different embodiments and future advancements to the product technology.

Interviewer: Thank you, I think that’s all we have time for today. For more information, be sure to visit Trenner Law Firm’s website at www.us-patentattorney.com and Mark Trenner’s blog over at www.ipatentattorney.org

Patent Attorney, Colorado‘s Mark Trenner answers questions about your Patent Portfolio.

Link to Video: What is a patent portfolio?

Interviewer: Does the article recommend only filing patent applications for important inventions?

Patent Attorney: No, actually the article correctly points out that market conditions can change, as can the products. Not filing a patent application for an invention just because the invention is not yet embodied in a product may lack foresight. And only filing a single patent application for a product and not following up with improvements can be equally short-sighted.

Interviewer: What does the article recommend companies do then to build a patent portfolio?

Patent Attorney: The article suggests asking the right questions to fully evaluate each invention. Evaluate invention disclosures from different perspectives, for example in light of the future products and the business goals of the company. Evaluate invention disclosures from a marketplace perspective, independent of the company, for example from a competitor’s view. Evaluate the strength of the patent – ask whether a strong patent will issue, and can the patent be enforced.

Interviewer: How do you know if the patent office will issue a patent for an invention?

Patent Attorney: There is no sure-fire way to know that the patent office will issue a patent, but a good technique is to start with a prior art search to determine the current state of the art and how that applies to the field of the invention. If the invention is in a crowded space, with a lot of prior art, then chances of success in the patent office are lower, and it may not even be worth pursuing a patent application for a particular invention.

For Part 4, see Patent Portfolio Q & A – Part 4 of 4

Patent Lawyer, Denver‘s Mark Trenner answers questions about your Patent Portfolio.

Link to Video: What is a patent portfolio?

Interviewer: How can an intellectual property portfolio be a source of revenue?

Patent Attorney: By licensing or even selling the rights under the patents, trademarks, copyrights, and even trade secrets to others to use.

Interviewer: The article goes on to say that not all portfolios are created equal. What do they mean?

Patent Attorney: A collection of assets is only as valuable as the assets themselves. If the patents, or trademarks, or other types of intellectual property have no value, then the portfolio will not have much, if any, value either.

Interviewer: So how do you strategically develop an intellectual property portfolio?

Patent Attorney: The article has some good suggestions. First, the article says that filing a patent application for every invention disclosure submitted by a company’s employees does not properly value the underlying technology. Some technology will have more value, and thus be more important to protect with one or maybe even more patent, while other technology may have little, or even no value. Spending money to protect inventions with little value wastes valuable resources that could be better spent protecting the more important technology – or better developing the intellectual property portfolio – perhaps by filing trademarks, copyrights, and investing in trade secrets.

For Part 3, see Patent Portfolio Q & A – Part 3 of 4

Denver Patent Attorney Mark Trenner answers questions about your Patent Portfolio.

Link to Video Video: What is a patent portfolio?

Introduction: We are here in Colorado to interview Denver-area patent attorney Mark Trenner. Mark has been practicing as a patent attorney for almost 14 years; the past 9 years at Trenner Law Firm. While his practice focuses primarily on helping small businesses protect their inventions with patents, Trenner Law Firm assists clients build out all aspects of their intellectual property portfolio, including copyrights, trademarks, and trade secrets.

Interviewer: Bloomberg recently published an article titled “Strategies for developing patent portfolios.” Please tell our viewers what is a patent portfolio?

Patent Attorney: I prefer to think more in terms of an intellectual property portfolio. And I often counsel my clients about the importance of an intellectual property portfolio with my business clients, as well as discussing these as various business groups. Let’s start by defining intellectual property. Intellectual property is the umbrella term for patents, trademarks, copyrights, and trade secrets. And of course, a “portfolio” is simply a collection of these assets.

Interviewer: And why is a patent portfolio – or an intellectual property portfolio – important?

Patent Attorney: As the article discusses, intellectual property portfolios provide value to a company in several ways. These assets protect a company’s products from others who might infringe. These assets can also be used as defensive tools, by providing leverage in negotiations. An intellectual property portfolio can also be an important source of revenue.

Patent Portfolio Q & A – Part 2 of 4