Who Makes Decisions on What Your Company Should Patent?

Let’s say one of your employees comes to you with an idea for a new product. After some in-depth research and consultation with your company’s corporate technology experts, you decide to sink some cash into development. What’s the next step?

Typical Board Questions What are the market potential and commercial impact? What degree of development is required? Is the product technically feasible? Is there interest from potential licensees? Does the inventor own patents or copyrights to the work? Are there any co-inventors?

“Where a servant (employee), during his hours of employment, working with his master’s materials and appliances, conceives and perfects an invention for which he obtains a patent, he must accord his master a nonexclusive right to practice the invention.” – The U.S. Supreme Court describing employers’ “shop rights” in the 1933 case Dubilier Condenser Corp.

Before you crank up the marketing machine, your company wants to be satisfied that the new product actually does what it promises to do. That means thorough testing and analysis by your IT department. Once you’re sure that all the bugs have been worked out, you must decide if the invention should be patented. If so, you must determine if the invention is the property of the company or the employee-inventor.

Typically, high-tech companies, universities, and other organizations create patent review boards or committees to make these critical determinations. The board is generally comprised of representatives from different parts of the company such as the Chief Operating Officer, Chief Technology Officer and Vice-President of Marketing. It may also include other high-level managers from the IT department and marketing departments. Finally, it is recommended that you have in-house counsel or an outside patent attorney — or both — occupy positions on the board.

If your company requires the processing of “invention or technology disclosure forms,” the board can review the vital information on these forms and make preliminary decisions. Usually, additional information is required, so the board may request face-to-face meetings with the inventors of the products. In addition to answering questions, the inventors and other personnel generally “sell” the invention to the board members and convince them of the likelihood for commercial success.

Ultimately, the board decides which inventions should be patented and which should not. Patent review boards rely heavily on the expert opinions of patent attorneys for the legal intricacies. If counsel is not represented on the board, a board representative can present recommendations to the company’s attorney for analysis. Legal advice is crucial in terms of the organization securing the patent rights.

It’s a long way from the creation of an invention to production, but the rewards for a company — both financial and intellectual — may be well worth the wait. A patent review board can help formalize the process and encourage staff members to develop new products.