If you’re looking for a way to build a comprehensive and cost-effective patent portfolio for your business, there are several strategies you can use. You may want to buy existing patents, or you may be able to license the technology. Or you may need to continue a patent’s life through a patent continuation practice. As a patent attorney who helped companies from startups to public companies in building their patent portfolios, I have developed an approach and structure to help companies build their patent portfolios. Read on to find out how your company can develop a strategy to build a great patent portfolio as well.
What is a patent portfolio strategy
A patent portfolio strategy is a plan for acquiring, managing, and leveraging a company’s patents to achieve its business goals. The main objectives of a patent portfolio strategy are to protect and monetize the company’s intellectual property assets and to minimize the risk of litigation.
A typical patent portfolio strategy includes the following steps:
- Identify the company’s core technologies and potential patentable innovations. This will help to prioritize which patents to pursue and where to focus the company’s R&D efforts.
- Conduct a freedom-to-operate (FTO) analysis to determine which patents may be blocking the company’s ability to commercialize its products or services.
- File patent applications in key jurisdictions to protect the company’s core technologies and potential patentable innovations.
- Regularly review and update the patent portfolio to ensure that it remains aligned with the company’s business goals and that it is not blocking the commercialization of other companies’ products or services.
- Leverage the patent portfolio to generate revenue through licensing, cross-licensing, or selling patents.
- Develop a litigation strategy in case of infringement of company’s patents.
- Create a process to monitor and analyze competitors’ patent portfolio to identify potential threats and opportunities.
A well-crafted patent portfolio strategy can help a company to protect and monetize its intellectual property assets, to minimize the risk of litigation, and to gain a competitive advantage in the marketplace.
Developing a comprehensive, cost-effective patent portfolio
Building a patent portfolio typically involves the following steps:
- Identify potential patentable inventions: This includes identifying new products, processes, or technologies that are novel and non-obvious and that have potential commercial value.
- Conduct a patent search: Conduct a search of existing patents and published patent applications to determine if similar or identical inventions have already been patented.
- Evaluate the patentability of the invention: Based on the results of the patent search, determine whether the invention is likely to be considered novel and non-obvious by the patent office.
- Prepare and file a patent application: Prepare and file a patent application with the appropriate patent office (such as the USPTO in the United States), which includes a detailed description of the invention and any supporting drawings or diagrams.
- Prosecute the patent application: Work with a patent attorney to respond to any objections or rejections from the patent office, and to make any necessary revisions to the patent application.
- Obtain a granted patent: Once the patent office grants the patent, the patent owner (or the inventor if unassigned) and can take action to prevent others from making, using, selling, or importing the invention without permission.
- Monitor and maintain the patent portfolio: After obtaining a patent, it’s important to monitor the market and the patent landscape to identify potential infringement and to take necessary steps to enforce the patent rights. Also, it’s important to maintain the patent by paying the necessary maintenance fees on time.
It’s important to note that building a patent portfolio requires a significant investment in time and resources. It’s a good idea to consult with a patent attorney to help navigate the process and to evaluate the potential costs and benefits of patent protection for a particular invention.
When developing a comprehensive, cost-effective patent portfolio strategy, there are many things to consider. Some of these include the size of your company, the types of technologies your company produces, and the competitive landscape in your industry. It also helps to evaluate the benefits of the patents that your company owns.
A strategic patent portfolio provides broad coverage of your products, manufacturing processes, and software components. These protections allow you to take advantage of licensing revenue opportunities. This strategy can also enable you to sell your technology at a higher profit margin.
To get started, you need to define your goals. For example, your company may want to focus on launching new products or developing lower-cost manufacturing methods. In addition, you might need to make sure your enterprise is capable of drafting and prosecuting patent applications. You might even want to look into the services of a US law firm.
Another factor to consider is your budget. If you’re an emerging company, you may have to cut down on patent filings. However, if you’re a large enterprise, you’ll have the resources to pursue a more robust approach.
You might also consider a hybrid model. This allows you to pursue an effective patent portfolio strategy, combining several different tactics.
The best way to do this is to develop a thorough understanding of the competitive landscape. This includes the products and technologies offered by competitors, as well as the patents of third parties.
You should also take into consideration the company’s goals, which could include maximizing market share, gaining brand loyalty, and improving profitability. If you know what your company’s goals are, you can determine what the right strategies for the company are.
Buying extant patents
Buying extant patents as a patent portfolio strategy can pay off in the form of a better strategic position and increased leverage in a competitive market. It can be a lot less costly than building your own portfolio and you’ll get to keep the intellectual property as well.
While you’re at it, you may also want to look at licensing, which can be a great way to add to your bottom line. If you’re looking to license a patent, make sure you’re doing it right and on time. This will help you clear the air and prevent your portfolio from falling into the hands of a patent assertion entity.
It can be difficult to gauge how much a specific patent is worth, but there are a few key factors to consider. For example, the quality of a patent is more important than the quantity. Also, it’s a good idea to check for patents that have been listed on online databases.
The best patents to buy are often those belonging to large corporations with the resources to sustain a patent pounding campaign. But, smaller startups and emerging companies have limited resources and can’t take the same chances. Oftentimes, their patents are too old to be of interest and may have been compromised, opposed or simply not developed enough to warrant further attention.
The best and most cost effective way to do this is to use an automated patent management tool. There are several options to choose from, including AiPi, a service that helps companies find, assess and buy patents. They’ll also recommend which patents to buy and which to avoid.
Another smart move is to use the tools available to assess the strength of your competitor’s portfolio. You’ll want to make an informed decision, as it will affect the size of your patent portfolio and your market share.
Patent continuation practice
Patent continuation practice is a practice that allows patentees to amend and refine their claims throughout the patent lifecycle. In some cases, this can make a patentee’s claim coverage more enforceable. Similarly, it can increase the chances that the PTO will eventually issue a patent.
Using continuation practice is a way for patentees to react to changes in technology or business. It can also be a deterrent to competitors. Continuation applications can be filed at any time during a patent’s life.
During prosecution, a continuation application may be used to broaden or narrow the scope of the patent. If a competitor seeks to make a design around, the patentee can respond by filing a new continuing application. The same patent specification is used in both applications.
Continuing applications have become increasingly common. As of mid-1990s, nearly one quarter of all patents issued were continuations. Interestingly, the Chemical, Biotechnology, and Pharmaceutical categories have the highest percentage of continuations.
Those who file continuation applications should be careful not to abuse the process. Abusing it can lead to a variety of legislative changes. Specifically, the Federal Circuit has expanded the scope of the written description requirement. This requirement is intended to eliminate any harm caused by continuation practice.
Continuation applications are often filed by individual domestic inventors. These patents are generally granted within the same term as the parent application. However, the length of prosecution has increased over the years.
One drawback of filing a continuation application is that it can be very costly. Typically, the cost is lower than the cost of the original patent.
Despite its costs, continuation practice has many benefits. It provides more opportunities for patentees to persuade the PTO to grant their claims. Alternatively, it creates a lot of uncertainty for competitors.
Licensing
Licensing as part of a patent portfolio strategy is a great way to get revenue from your R&D investments. In fact, patent licensing can produce hundreds of millions of dollars in revenue for companies with a large patent portfolio.
Before you decide to license your patents, you should understand the importance of quality patents. Quality patents are important for valuing your patent portfolio, as well as for monetizing your patents.
When negotiating a patent licensing agreement, it is important to consider how long you want your contract to last. Licenses can be written contracts, and failure to comply with performance obligations can result in the termination of your license.
Another factor to keep in mind when negotiating a licensing agreement is the royalty rate. Royalties are usually based on the profit earned by the licensee. However, a percentage of net sales may also be considered. It is important to follow FRAND (Fair, Reasonable and Non-Discriminatory) terms.
The FRAND principle is a rule that governs intellectual property licensing agreements. A violation of the FRAND principle is regarded as a violation of antitrust laws.
You should contact potential partners before deciding to license a patent. Doing so will help you to better negotiate a deal. If you’re unsure about how to approach a potential partner, it’s a good idea to consult with legal professionals.
Patent licensing programs have become increasingly common. Companies such as Microsoft, IBM, and Nokia have developed programs to generate substantial revenue from their patents. They have also used cross-licensing to avoid litigation.
Cross-licensing has become precompetitive. This allows a company to compete with other companies in a marketplace without having to worry about balancing payments.
Excluding others from the technology
Having a patent portfolio can be an expensive proposition, especially if you’re a small firm. Luckily, a robust strategy can help you maximize your investment and minimize your risk.
One of the best ways to improve your chances for winning the race is to use patents to your advantage. These intellectual properties can bolster your brand image, thereby boosting your direct sales, as well as your licensing revenue. But if you do not have a comprehensive patent strategy, you may be at risk of being stung by a patent lawsuit.
The best way to figure out what your patent portfolio is made of is to undertake a portfolio assessment. This process should involve a number of key considerations. It is important to decide what types of patents you will be building, where you want to locate them, and how you will monetize them. Developing a solid strategy also requires a budget. Depending on your industry, the investment required to build a portfolio of patents may be substantial. Nevertheless, if you do it right, you can maintain a competitive edge in a crowded marketplace.
The best way to build a good patent portfolio is to identify your strengths and weaknesses and monetize those strengths with the right patents. For example, you might consider licensing your patents to a company with a low-cost manufacturing capability. Or, you might consider using them as bargaining chips in an exchange for a new patent.
You should also do a patent portfolio strategy review on a quarterly basis to ensure that you are on the correct track. By doing this, you will be sure to be in the know when it comes to announcing the latest innovations, and you will be able to see what you need to improve your overall patent portfolio.
