As team leader and Senior ME on many different product development projects, the topic of IP and patent protection invariably comes up at some point during the product development process, especially for development efforts that are revolutionary or have potential to really shake up an industry. When it comes time to involve counsel, it is very important to work with them efficiently and effectively in order to ensure that they can provide you with the most robust IP position possible. Here are the top 5 things I have learned to do in my capacity as Lead Engineer when working with legal counsel:

#5: Realize that your counsel is your friend

During the course of the development process, you may get frustrated with your attorney, especially after you receive the first bill or two. You may also be frustrated because your counsel has gone off on a tangent and missed the point of why your invention is so cool or revolutionary. You must understand that the work they do is both very tedious and very specialized. It may take more than one pass to convert the key features that define your invention into a set of broad claims that will give you as much protection as possible. Regardless of why you are feeling frustrated, you must remember that your counsel is there to help you, not to aggravate you. You need to figure out what it will take to get the point across and help bridge the gap a little bit between the engineering and the IP. Every attorney is different in terms of what the best way of working with them is, but they all really want to help you in your IP endeavor.

#4: Cover all your bases

Many times during a development process you will have come up with the best way of satisfying your product requirements after having designed and tested 3 or 4 (if you’re lucky) different approaches to the problem that were radically different from each other. Maybe these other approaches were just “OK” compared to your “winning” design, but could still have potential if corporate would just give you the time and money required to develop them further. Maybe your ideal design was “almost there” in terms of working properly but, because of time constraints, you had to fall back to your “plan B” in order to deliver a product on schedule. Regardless of your reasons, don’t neglect to communicate these alternate approaches to your attorney. These alternate designs may represent potential avenues through which a competitor could design and market a very similar product that solves the same problem. Always try to find ways to keep the competition out!

#3: Provide drawings and schematics. 3D CAD is even better

During the course of the patent process, you will have to communicate enough information to your attorney such that they can describe your invention in a way that is enabling. In order to do so your attorney may request figures and diagrams in order to better understand the invention and how it works. Don’t skimp on these figures. Make them as clean and descriptive as you can. If you have access to a 3D modeling program like Solidworks or ProE, a 3D assembly of all the components and mechanisms is even better. Make sure you understand your own invention and how each component interacts with the next to achieve your end goal. If all you have is an idea, but have no clue as to what mechanisms or features are required to make it happen, you are probably not ready to begin the patent process until you have figured it out.

#2: Have a plan

Do you intend to go into full production and manufacturing ramp-up with your invention? Is your invention intended to be the back-bone on which you plan to build a company complete with manufacturing and distribution channel? Do you intend to come up with the invention and use the patent as a means to pitch your new venture and raise capital? Do you just intend to pitch your idea to an established manufacturer and hope they buy your IP outright? Are you working for a corporation and intend to use your IP to set up market entry barriers for your competition? These are all questions you need to think about and be able to answer. You also should communicate your intent to your attorney, as they may have some insight or expertise on how to best approach the IP effort depending on your goals. It may also have an impact on how, as an engineer, you approach the design process and how deeply you want to refine your invention once you get into prototyping, CAD, etc.

#1: Communicate effectively

The most important part of working with your attorney is communicating effectively. As an engineering director or manager, the engineer you should assign as an interface to the IP counsel is one who can speak and write clearly, is enthusiastic about IP, and is creative and can think on their feet. Of course they should also understand the product backwards and forwards as well as have a knack for what would make the product successful from a commercial perspective. The key is to help guide your IP counsel on what they key innovative features of the product are and why they matter compared to other products or devices. The sooner you can make it “click” for your attorney, the faster they can work and the better their output will be. Remember that what is obvious to you may not be obvious to your counsel.

That’s about it! Please feel free to ping me with any comments or feedback. I have also included a link to a helpful article on how to get the most out of your IP budget:

http://venturebeat.com/2009/10/21/getting-the-most-out-of-a-bootstrapped-ip-budget/

-Orlando