Attendees of a Brown forum suggest multiple layers of patents to protect intellectual property
Inventors looking to start or grow their companies should ensure that their portfolio of patents and intellectual property are both viable and protected.
That was the message several speakers brought to the Brown Forum for Enterprise seminar “The Patent Portfolio and Intellectual Property Strategies” at the Naval Undersea Warfare Center in Newport two weeks ago.
A company that maintains and builds on a strong core of patents and intellectual property will be in a better position to raise capital, form partnerships and build a reputation, said keynote speaker Andrey Zarur, president and CEO of BioProcessors Corp. in Woburn, Mass.
“Demystifying intellectual property is a very important part of an intellectual property portfolio,” Zarur said. “Intellectual property filings are assets.”
Zarur compared building an intellectual property profile to managing an investment portfolio.
“Make opportunistic investments that make sense,” Zarur said.
To start, a company should have a well-balanced core asset collection to build upon that’s based on intellectual assets. He used the beginnings of his company, BioProcessors, to illustrate the point. First, the company designed the micro bioreactor device – a computer chip that simplifies the development of pharmaceuticals – and lowers the cost of research. Once they had the core asset, they filed for various patents to protect the broad concept of the device, its construction and potential uses.
“It disallows people from doing things you want to do with your (invention),” Zarur said. “You need to patent the core asset and all aspects of it.”
Once the core asset is patented, it’s important to continue to build that collection of patents and intellectual property.
“Building layers of patents is building protective layers around your (idea),” Zarur said.
Monika Vnuk, an associate of Oxford Bioscience Partners in Boston, said the reason her company invested $18 million in Zarur’s company is “because we saw in him an excellent entrepreneur. We wouldn’t have backed him if he didn’t have strategic intellectual property. The patent is key to us to make sure he has the tools to succeed.”
James Kasischke, supervisory patent attorney for NUWC, said while the center wants to publicize its research and technology, it’s difficult to do if the work isn’t sufficiently patented.
“We want to get our technology out there,” Kasischke said. “It’s hard to get it out there if it’s not protected.”
Companies that want to license government-patented inventions need to submit business plans so NUWC can determine for which portion of the royalties they are eligible. They prefer a non-exclusive license and U.S. manufacturer.
“Our purpose is to provide jobs for American people,” Kasischke said.
Contractors who are paid by the government to develop something have first right to patent the invention. If the contractor elects not to patent the invention and the government obtains the patent, the contractor may continue to produce the invention but the government can license the product to someone else, Kasischke said.
Intellectual property can also provide an early source of revenue for startup companies, said Michael Siekman, a patent attorney for Wolf, Greenfield & Sacks in Boston.
“One of our clients is five or six years away from marketing (their product), but makes between $15 and $20 million a year off their patents,” he said. “Intellectual property is important at each phase of business.”
Siekman emphasized the importance of getting a patent lawyer early on in the patent application process.
“You want someone you’re comfortable with and who understands your technology,” to guide you through what can be a lengthy application process, Siekman said.
Establishing ownership of an invention is easier if good records such as lab notebooks are kept. The records should show progress on the project and be witnessed by an uninvolved party, Siekman said.
Siekman said while the timeline for obtaining a patent is determined on a case-by-case basis, it can take between 24 and 36 months for the application and approval process to be completed. Once all the fees are paid, a U.S. patent is good for 20 years then must be renewed to be kept in the original applicant’s name.
