Prenuptial Patenting: Responsible Engagement with Engineering Firms
Jul 28, 2022
This podcast discusses the importance of prenuptial patenting when engaging with engineering firms. The topics covered include vetting partners, securing intellectual property, managing conflict of interest, the relationship between innovation, technology, and patenting, the importance of commenting code, and crediting engineering firms in patents.
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Engineering Relationships as Marriages
Relationships with engineering firms are like marriages designed to end in amicable divorces.
Planning IP ownership and assets return before engagement is crucial for smooth separation.
volunteer_activism ADVICE
File Provisional Patents Early
File provisional patent applications before engaging engineering firms to establish your IP ownership.
This protects your existing ideas against IP disputes from added development.
volunteer_activism ADVICE
Vet Engineering Firms Carefully
Vet engineering firms by geography, relevant expertise, security, and conflict of interest management.
Understand their working models and oversight of subcontractors before engagement.
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You have your big idea and now it’s time to breathe it into existence, but you need some help with the development. Like many others, you may turn to the aid of an engineering firm or dev shop. This relationship is a marriage of sorts. But it’s a marriage that is designed to inevitably end in divorce! How cleanly, smoothly, and successfully this separation goes depends on the steps that you take before it officially begins.
Both parties come to the relationship with existing assets – IP, software, prototypes, ideas, documentation, etc. More will be created collaboratively throughout the course of the relationship. But how do you ensure you exclusively get back out what you came with and also get what you contributed and uniquely paid for?
In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads a discussion into Responsible Engagement with Engineering Firms, or what we affectionately refer to here as “Prenuptial Patenting”. Ashley and our all star patent panel walk you down the aisle and explore everything you need to know to experience marital bliss and an amicable divorce with your engineering partners. This talk covers the full life cycle from vetting partners to post development concerns and everything in between – with particular focus on relationship complexities like IP ownership, assignment from engineering firm inventors back to you, and how to avoid the traps of viral IP.
Ashley is also joined today by our always exceptional group of IP experts including:
Patently Strategic - Patent Strategy for Startups