Patently Strategic - Patent Strategy for Startups
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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Quick takeaways
- When engaging with engineering firms, it is important to consider factors such as geography and jurisdiction, security and conflict of interest management, experience and expertise, working models, and cascading contractors.
- During the product development phase, it is essential to maintain an active feedback loop, understand the sources of innovation, and secure access to code repositories. Monitoring patentability and freedom to operate, and managing open source considerations, are key aspects.
Deep dives
Preparing for Engagement with Engineering Firms
When engaging with engineering firms, it is important to consider factors such as geography and jurisdiction, security and conflict of interest management, experience and expertise, working models, and cascading contractors. Clarifying expectations, deliverables, timeframes, and guarantees is crucial, as well as understanding code ownership and open source considerations. Additionally, compliance with FDA regulations and the use of prototypes and proof of concept should be taken into account.
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