Tasks of a Patent Manager
Objective: To identify the tasks of a patent manager, taking into account that there is little time available for the task and no special knowledge in the field of patents.
The Patent Manager
A patent manager who has limited working hours available for patent issues and lacks in-depth knowledge of patent law should primarily focus on tasks that require internal company knowledge. The responsibilities of a patent manager do not require extensive legal expertise. Solid knowledge of the company's products, the techniques and technologies used in them, organizational skills, and a certain level of interest in intellectual property are necessary for the tasks of the patent manager.
Tasks for Patent Work
Conducting patent searches: Identify patents that could be of interest to the company. No special knowledge or programs required.
One-time. Again, when new technologies are comming up relevant for products.
Identification of Inventions: Collaborate with development teams, have personal discussions with developers to identify potential inventions or innovations that could be patentable. This requires a good understanding of market product, trends, and the technologies applied in these products.
Every 6 weeks.
Communication: Act as an interface between different departments to exchange information about patents and intellectual property. This may also include coordination with external patent attorneys.
Ongoing.
Assessing Whether an Invention Report Should Be Filed for a Patent: Evaluate the patentability of the invention. Assess the benefit of the invention for the company. This requires specific knowledge about the company's products, product roadmap, and processes. If the invention has no direct benefit for the company, it should be examined whether the invention could be significant for third parties (licensing revenue).
As needed.
Determining the Scope of Patent Protection: In which countries should a patent application be filed? Knowledge about the business activities in each country is required.
As needed.
Competitive Monitoring: Evaluate the potential impact of competitors' patents in relation to one's own products and product developments. Identify trends and potential risks. Knowledge about competitors' patents and one's own products/product developments is necessary.
This is a one-time task; afterwards, monitor competitors for new patent applications or changes in the status of a patent.
Market Monitoring: Observe trends and developments in the industry. Position one's own innovations in comparison to competitors and the market. Map relevant patents from market observation to the company's product roadmap to identify disruptive patents in a timely manner. This requires knowledge about the market strategy, product development, and company development.
Regularly, on a semi-annual basis.
Reporting: Create reports on the status of patents and their significance for the company to inform management. Regularly, on an 8-week basis.
Situationally, when a risk has been identified.
Tasks that may be added later
Training and Awareness for Company Employees: Conduct training and informational events to raise awareness of intellectual property and the importance of patents. The specific products and technologies of the company should be the focus.
Support in Strategy Development: Participate in formulating goals where patents could support the achievement of company objectives, for example, in formulating a patent strategy.
Collaboration with External Patent Attorneys: Assist in communication with external patent attorneys. Provide relevant information and technical details that are only known within the company.
Typical Tasks that can be performed without company-specific knowledge:
Assessment of Patentability: Typically, a patent attorney formulates the patent application to be submitted to the patent office. The patent attorney must work out the inventive concept, distinguish the invention from the prior art, and formulate a corresponding patent claim. "What is new?". This work requires direct communication between the inventor and the patent attorney.
Document Management: Organize and maintain patent documents to ensure that all relevant documents are easily accessible.
Deadlines: Ensure that important deadlines for annual fees and oppositions, correspondence with the patent office, etc., are met. This task does not require knowledge about products or techniques.
Special Research: Conduct special patent searches, e.g., for a Freedom to Operate (FTO), which are time-consuming and require special knowledge. This type of research is only occasionally necessary.
Summary:
At the beginning of the role as a patent manager, it is essential to identify the patents that are important for the company's products and/or processes. The entirety of these patents is summarized in a patent portfolio. This patent portfolio serves as the basis for further analyses and decisions, regardless of the type of business.