Sky Radio: America’s Best Lawyers
Patent Attorney Russ Weinzimmer was interviewed as an invited expert on the in-flight airline station “Sky Radio” for their show “America’s Best Lawyers”, answering the question: What’s Patentable?
Determining whether an invention is patentable involves legal considerations that most business owners and engineers are not aware of, and even marketing considerations that they’re not aware of, but a good patent attorney brings both those considerations when evaluating the technology suite of a company.
Transcript of Radio Interview: What’s Patentable?
It’s tough to protect your company’s most valuable assets if you’re not sure what they are. That’s a problem of growing technology companies according to our next guest. Russ Weinzimmer is a strategic patent attorney who believes that even the engineers that develop a company’s most valuable intellectual properties may not be the best judge. He joins us now on “America’s Best Lawyers.” How you doing, Russ?
Glad to be here.
Well, thanks for joining us. Now, you suggest that companies may not be cognizant of the intellectual properties that they hold?
That’s right. Engineers typically have not been educated as to what is patentable in the work that they’re doing and so they come to erroneous conclusions.
For example, even the best engineers are holding a very high standard for what they feel might be patentable. They think it has to be some flash of brilliance, it has to be something very clever, when in fact it just needs to be new.
And for the company to invest in the patent process, it needs to be an important feature for customers, something that customers would value.
This is mind-boggling to me that even your engineers and engineering management may not know what they have.
Yeah, it amazed me too. It’s because it involves legal considerations that they’re not aware of and even marketing considerations that they’re not aware of, but a good patent attorney would bring both those considerations when evaluating the technology suite of a company.
So what are the key elements when it comes to patentability of a company’s intellectual properties?
The key elements are novelty and non-obviousness.
And the way novelty is evaluated is not by asking the engineers what is new, because from their point of view, they think everything is obvious and therefore, it can’t be new. They think their competitors are already thinking of it before they have. They’re very self-deprecating.
So the way to determine novelty is to just do a search. Searching patent databases, literature databases, searching Google will be the quickest way to determine novelty.
And obviousness is an issue that is often misunderstood, because it’s really a legal standard, not a subjective standard. And the engineers, as well as management, even corporate management, don’t understand what the legal criteria for obviousness is.
Now this is a money issue too. How are CEO’s missing out on revenue streams by failing to analyze these assets?
Well these assets have applicability when properly understood beyond the markets that a company is selling into. And a patent attorney can understand the true general applicability of the technology and provide guidance to the corporate management on how to license this technology into non-competing markets.
Russ Weinzimmer is the founder of Russ Weinzimmer & Associates, P.C.
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