Choose the right strategy to manage intellectual property

Mathieu Boilard, is the co-founder of Nasci Biologie Médicale, a medical laboratory specialized in male fertility in Longueuil, Quebec. They invent new ways to detect human semen anomalies that are undetectable through classical analysis. This research on male fertility requires a rigorous management of intellectual property.  For innovative entrepreneurs who wish to protect their inventions, Mathieu offers this advice:

• Pay attention to inadvertent public disclosure. The “secrecy strategy” is a way to maintain your monopoly over the invention without having to invest in order to obtain a patent. However, it becomes a challenging issue when it is time to sell the competitive edge of the invention and answer to questions from clients, investors or potential partners. In the heat of the moment, answers, even slightly detailed, could not only lead you to explain the nature of the invention and reveal your secret, but to lose your opportunity to obtain a patent, because of public disclosure. In certain cases, a public disclosure could affect your capacity to protect the invention with a patent, and therefore you have to consider all options before choosing the “secrecy strategy.”

• Until patented, mum’s the word. If you need to explain the nature of your invention in order to generate sales, which is often the case in the medical sector, the invention is kept secret until the filing of your patent application. The date the patent application was filed will then have the priority over any other potential application for patent for the same technology. Just remember that before the application is filed, absolute secrecy must be maintained, despite the enthusiasm. If it is necessary to reveal your discovery during this period, each organization informed will have to sign a confidentiality agreement that will bind them and all the employees concerned to an obligation of secrecy. This confidentiality agreement is used only when the disclosure to a trusted partner is critically necessary. If not, don’t say a word!

The application for patent and the description of your invention becomes public 18 months after you filed your application. If you obtain a patent for your invention, you will keep its monopoly. If you abandon your application for patent after it has been published, your secret is then out of the bag and the invention can be used by anyone, without having to pay you anything. This is why you need to carefully choose your strategy: secrecy or the initiation of the patent process.

If you innovate, it is critical to hire a competent patent agent who understands your domain of expertise in order not to lose great opportunities to grow your ideas. A patent agent will help you choose the best strategy for you.