Why IT Managers Need To Know About How Patents Work

by drjim on January 15, 2015

IT managers need to understand the changes that have happened to how patents are filed

IT managers need to understand the changes that have happened to how patents are filed
Image Credit: D S Simon Productions

IT manager are on the front line of innovation for their companies. There is a very good chance that many of the new or novel ideas that their company dreams up will come out of their team. Because of this, it is critical that IT managers understand how the U.S. patent system works. What makes this even more challenging is that there have recently been a number of changes to the process of applying for a patent.

Searching & Applying For A Patent

As an IT manager, one of your IT manager skills has to be to identify things that your IT team has done that may be patentable. Sorry, I don’t think that any of us has received any IT manager training in how best to go about doing this. These need to be new or different ways of solving problems that you think that other firms might be able to use. Once you’ve spotted a potential patent candidate, you then need to get the company’s legal team involved.

The first thing that the legal team is going to do is to perform a patent search. There is no sense in moving forward with your team’s discovery if someone else has already patented it. These days the patent search has to include international patent databases. Two good databases that you’ll want to make sure that your legal team searches include the World Intellectual Property Organization’s Patentscope database and the European Patent Office’s website.

The next step is for you to meet with the legal team and determine if it would be worth it for the company to file a provisional application. Doing this will hold your spot in line to file for a real patent for a year. Remember, the new patent rules say that the first company to file for a patent gets the patent – it no longer matters who invented it first.

Secrets To Sharing Information & Saving Money

Who you tell about your patentable idea turns out to be very important. The rules state that if a member of your IT teams publically discloses the patentable idea at a conference or during a meeting with a customer, then from that moment on the company has one year to file a patent application or else it risks losing its rights to it. One good way to cover yourself is to make anyone that your team meets with sign a confidentially agreement. This way if the idea is discussed, the clock won’t start running.

How many patents your company is currently applying for at any given time matters. The rules state that if the company has less than four patent records on record, then it is considered to be a “microentity”. This means that the cost of filing a patent application will be ½ the normal cost.

One of the things that an IT manager needs to understand is the total cost to the company of applying for a patent. The actual application fee is relatively small (about US$800); however, the legal fees associated with a filing can easily run up to US$10,000 or more!

What All Of This Means For You

One of the most valuable things that a company can have is its collection of patents. This puts IT managers in a tricky situation: we are always operating at the cutting edge of innovation at the company and our teams are the ones who are most likely to create ideas that can be patented. This means that you need to know how the patent system works.

The rules have recently changed and now the first to file gets the patent. This means that you need to conduct a global search to make sure that your patent has not already been claimed. When your team has an idea that might be patent-worthy, you can provisionally apply for a patent to reserve your spot. You’ll need to be careful about sharing information about your idea because you may cause the clock to start ticking. Finally, depending on the size of your company you may be eligible for a lower rate for applying for a full patent.

Patents are powerful tools for companies that are competing in contested markets. As an IT manager you are in the best position to identify patent opportunities and to take actions that will start the process of applying for a patent. Helping your IT team to get a patent is a great way to accomplish some IT team building. Make sure that you understand how the system works and you will become an even more valuable IT manager for your company.

– Dr. Jim Anderson
Blue Elephant Consulting –
Your Source For Real World IT Management Skills™

Question For You: Is there a system that you can set up that will allow you to spot patent opportunties created by your team?

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What We’ll Be Talking About Next Time

As an IT manager, you are faced with a number of significant challenges. One of these is to use your IT manager skills to get the most productive work out of your team given the budget that has been provided to you. There are a lot of different ways to go about doing this; however, there is one that you may not have thought of. It’s a relatively new concept: nearshoring. How would you feel with having a part of your IT team located in Mexico?

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