“Business Fit” evaluates how the idea fits into your business’s existing business, areas that your business has identified as growth areas for the future (that are not just expansions of your business’s existing business), strategic areas (meaning areas that your business has to be in in order to expand their existing business or enter into growth areas) and embryonic or long-term areas.

Business Objectives – The phenomenally successful business book/novel The Goal by Eliyahu M. Goldratt reminds us that the goal of business is “to make money”, specifically “to make money by increasing net profit, while simultaneously increasing return on investment, and simultaneously increasing cash flow” (page 49).  (I heartily recommend reading The Goal.)

Business Strategy - Your business' plan to advance your business objectives and produce results for your bottom line.

“Competitive Blocking Patents” are defined as either technology patents or therapy patents that describe and claim subject matter that does not read on your business’ products or therapies but does read on one or more competitors’ products or therapies.

Confidentiality Agreements

Constitutional Basis for Patents: “The Congress shall have Power ... To promote the Progress of Science and useful Arts, by securing for limited Times to ... Inventors the exclusive Right to their ... Discoveries”  U.S. Constitution, Article I, Section 8

Contracts – An agreement between two or more persons that creates an obligation to do or not to do a particular thing.  The parties can agree to anything not prohibited by law or against public policy

Copyright – An intangible, incorporeal right granted by statute to the author or originator of certain literary or artistic productions whereby he is invested, for a limited period, with the sole and exclusive privilege of multiplying copies of the same and publishing and selling them.

Design Around - The process of designing or changing the design of a product, process or method in order to ensure that the resulting design does not infringe on the patent rights of others.

Intellectual Property - the products of People’s minds.  Intellectual Property includes patents, trademarks, copyrights, trade secrets and know-how. 

IP – Intellectual Property

IP Strategy – A written plan identifying:

• Exactly what is important to your business and why it is important
• What IP you already have and how valuable it is to your business
• What areas you can develop IP in to give your business a competitive advantage
• How you can broaden your IP to maximize the scope of protection it can afford you
• Where your IP fits into the broader IP landscape including identifying
  • trends in your industry and
  • opportunities for proactive IP development to give your business a competitive edge
• Where your competitors’ IP is located so you can:
  • avoid it and
  • take efforts yourself to cause them problems

License – permission to do something that, without the license, would not be allowable.  In the case of patents, a written authority granted by the owner of a patent to another person empowering the latter to make, use or sell  the patented article or use or practice the patented process for a defined time period in a defined territory.

“Method Patents” are patents that use a device, system or component to perform a function.  Method Patents typically have claims that start with “A method of [whatever the function is] according to the steps of …..” where the steps begin with words ending in "ing" such as "mixing", "separating", "coating", etc.   

Monopoly – A privilege or peculiar advantage vested in one of more persons or companies consisting of the exclusive right (or power) to carry on a particular business or trade, manufacture a particular article or control the sale of a whole supple of a particular commodity.

“Paradigm Shift” is the extent that the idea changes the way Customers and your business itself views the way it treats medical conditions that your business’s devices now treat or that your business would like to treat in the future or the way your business does business.

Patent – A government grant of exclusivity for a limited time preventing others from making, using or selling the covered invention without the patent owner's permission.  Patents do not give the right to practice the patented invention.  Instead, they give the right to exclude others from making, using or selling the patented invention.

Patent Infringement - making, using or selling a patented invention  without permission from the patent owner.

 “Patent Quality” is determined by whether a patent claiming the idea would be a “pioneering” or a “me-too” patent, would have broad, moderate or narrow claims and whether your business would be able or likely to enforce the patent against third parties.

 Prior Art – anything in tangible form that may be properly relied on by the patent office or in a legal proceeding in support of rejecting or invalidating claims based on the substance, not form, of the claimed invention.

 “Poison the well” - means to publish an idea in a publicly available journal but one that does not have high visibility.  This creates a public disclosure bar to anyone seeking to obtain a patent on that idea in the future.  Effectively, poisoning the well with a particular idea allows your business the opportunity to use the idea in the future without any threat that a competitor or others could get a patent on the idea and prevent your business from using the idea.  Of course, after one year from the publication date, your business would also not be able to get a patent on the idea either.  As a result, “poisoning the well” is usually considered a defensive move.

 “Technical Feasibility” is defined as the feasibility of being able to actually turn the idea into a product.  It includes an evaluation of the development cost, development time, likelihood of technical success and whether YOUR BUSINESS has in-house competency to develop the idea.

 “Technology Patents” are defined as patents describe and claim the components, systems and features of devices that your business makes or sells or would possibly like to make or sell in the future. 

 “Therapy Patents” are patents that apply a device, system or component to treat a particular medical malady.  Therapy Patents typically have claims that start with “A method of treating [whatever the medical malady is] by the steps of …..” where one of the steps involves “providing a device [or system, component, etc. with a description of the device]” and at least some of the remaining steps involve the application of the device, system or component to treat the malady. 

 Trademark – a word, phrase or symbol attached to goods or services that: 

• points to a single source and
• distinguishes your goods and services from others’ goods and services.

 The key element of trademark law is to avoid confusion between your goods and services and the goods and services or others.

 Trade Secret - anything that is secret that gives competitive advantage.  The key is, that thing that gives the competitive advantage must be secret; if not, then the trade secret is lost. 

 “Value” has two parts: value to your business’s business and value to your business’s customers.  Value to your business’s business includes whether the idea has the potential to increase your business’s net income, your business’s market share in the markets it already competes in and whether it opens new markets to your business.  Value to your business’s customers includes whether the idea increases the efficacy of a treatment for a medical condition, improves ease of use for the Customer, is an idea that the Customer perceives value in and is willing to pay for or increases reliability of the device incorporating the idea.

Copyright © 2005 Sirius Strategic
Last modified: February 12, 2007