Insight on Manufacturing

November 2020

Issue link: http://www.insightdigital.biz/i/1308856

Contents of this Issue

Navigation

Page 21 of 39

22 | /INSIGHT ON MANUFACTURING • November 2020 w w w.in s i g h t o n m f g . c o m B A C K O F F I C E Protecting assets Manufacturers have several options to keep their ideas safe BY MARYBETH MATZEK All businesses have something unique about them, but sometimes that something special needs to be protected from competitors. That's where patents, trademarks and trade secrets come into play. Protecting intellectual property — whether it's a process, product or idea — is also something businesses shouldn't let lapse, says Stephen Jensen, a senior IP attorney with Davis|Kuelthau's office in Appleton, who presented "Safeguarding your Intellectual Property Assets in Turbulent Times" during October's Manufacturing First Expo & Conference. Patents cost the most to procure and come with regular maintenance fees that increase over the 20 years the patent is active, he says. "When your business is in a famine state, you want to reduce costs and there are sometimes hard choices you need to make," Jensen says. "Stopping paying maintenance fees on a patent is a drastic step and is something that needs to be carefully thought through." Derek Prestin, an IP attorney with Ruder Ware, says deciding to let a patent lapse should only be done in extreme situations. "If it's on technology that is out of date or related to a product you don't make anymore, then it's an easier call to let it go," he says. "If it's an industry that moves fast with new products coming out all the time, maybe you don't need that patent in the first place. You need to weigh all of the options." Another option with a patent is to sell licensing for it, which would then generate income, Jensen says. If a company does decide to give up its patent, Michael Bendel, an IP attorney with Epiphany Law, says it could cost a business its competitive advantage. "If the patent expires and the product is out there, it won't take long for other companies to reverse engineer it, and what made your product unique is gone," he says. Prestin says the government does offer a grace period if fees are not paid, which can help provide a business with a little extra time, but that comes with an additional fee. "Once you lose a patent, you can't get it back, so you better think carefully before making that decision," he says. For businesses thinking about getting a patent, Jensen says the first step is to conduct thorough research to make sure the product or process you're thinking of patenting isn't already covered by another patent and isn't too close to another company's patent. The national average cost to obtain a basic utility patent is $8,800, according to the U.S. Patent and Trademark Office. "You need to do your research — or work with a patent attorney — to make sure the idea you are looking to patent isn't already under patent protection so you don't go through the process and end up wasting that money," Jensen says. "It's also possible a patent examiner will reject your application, so one strategy is to write a narrow scope instead of cramming everything together." Trademarks are another way a manufacturer can protect itself. They protect logos, an indicator of source, not an idea, Prestin says. If a business decides not to pursue a trademark on its logo, for example, another company could create one very similar, which could confuse customers. Bendel says it's important for businesses to protect their trademarks and keep paying any fees since it protects brand recognition, which if lost, can cost the company sales.

Articles in this issue

view archives of Insight on Manufacturing - November 2020