This is not to say that patent attorneys are not currently serving their clients’ best interests. To the contrary, I have the utmost respect for the work done by law firm patent attorneys. Indeed, as an corporate patent attorney, I hired Mr. McDonough’s law firm for high-value patent matters. And, if I had a client with needs for a high-quality patent in certain technology areas today, Mr. McDonough’s law firm would be on my short-list of patent providers.
My goal is with this posting is not to criticize his advice, but to add that prior to taking Mr. McDonough’s advice of working with a “skilled intellectual-property attorney to develop a plan for building your IP portfolio”, you should first determine whether you will create and maximize your company’s business value by building a portfolio in the first place. In short, prior to building, you must first decide decide if a proper business foundation exists for doing so.
When might it be in the best business interests of for a company to not get a patent? Some common ones situations are:
- Your product business cycle is very short such that a patent will issue long after your product is finished in the market
- Disclosure would give away critical trade secret information that would empower your competitors
- You have no interest in ever enforcing a patent in court, no matter how strong the claims of your patent
There is no doubt a myriad of additional reasons why a business should not get a patent, and there are as many or more reasons that a company should build a patent portfolio. An intellectual property strategist, such as myself, or a good intellectual property attorney, such as Mr. McDonough, can work with you to work through the various scenarios that may exist in your company’s particular situation. Prior to making a decision one way or the other, however, you should be prepared to walk away from the process if you determine that your company’s long term value will not be maximized from starting this process. Put another way, what you know about not patenting is just as important to your business success as what you know about patenting.