One of the most effective ways to bring value to a company is to create strong patent portfolios. If you are new to patent portfolios, it’s essential to know the various benefits they provide. For example, they protect products from parties who might infringe, help control market share, act as defense tools, and grant leverage in negotiations. Even more, patent portfolios can become sources of income through sale or licensing.
However, to reap the maximum benefits of patent portfolios, it is crucial to develop them strategically. Typically, patent portfolios developed with careful consideration are more successful.
The Cons of Traditional Methods
The practice of identifying and selecting inventions to patent can significantly impact a patent portfolio’s effectiveness. Unfortunately, traditional approaches to developing patent portfolios often neglect this strategic decision-making process.
To understand this further, consider how a company might call for patent applications for every invention disclosure submitted by their employees. In this case, each disclosure is given equal treatment, value, and budget. Yet, differently, consider the company taking a more selective approach. They might decide to single out key technologies relating to the company’s flagship products and only file those. While these approaches are vastly different, it’s important to note that they both have their potential drawbacks.
Patents are the most successful and valuable when they can comprehensively and clearly describe the necessary technologies vital to their products. While filing applications for all invention disclosures and giving each of them equal treatment may result in important technologies patents, it might overlook an important aspect. In other words, using this approach might make it even more challenging to provide coverage for alternative or commercially successful embodiments materialized by your competitors.
Developing a portfolio without a plan can also result in severely misallocated resources. Companies might spend too much time and money on inventions with low success probability with the approach discussed above. So, in the end, this disrupts any potential for strategies and monetization. Even more, some patented inventions may not effectively enforce infringement litigation if it is challenging to prove.
On the other hand, an approach that limits the filing strategy and only focuses on the most viable invention disclosures has its cons, too. Because product designs, particularly in emerging technologies, change and evolve quite rapidly over time, limiting patent disclosures does not produce successful results.
In other words, suppose a company files a patent application for a product. Because they fail to file additional applications on improvements developed after the initial application, they might lose the ability to patent these improvements. The additional improvements may prove to be important and value the components disclosed in the initial patent application.
Patents also provide value to a company when they cover products or technologies other businesses want to profit from. Even if the patented inventions don’t necessarily factor in a company’s current product plan, they can still act as assets suitable for sale or future licensing. It’s important to remember that companies may miss the opportunity to patent potentially valuable inventions if they fail to recognize that inventions beyond their business model can be monetized.
Ask Questions and Be Knowledgeable
The first step in developing a well-rounded patent portfolio begins with having all the necessary information to examine every invention disclosure. With this knowledge, you are best able to correlate invention disclosures with your company’s business and technical objectives. Also, the portfolio has a better chance of including strong patents capable of elevating the company’s goals. More than describing the invention, invention disclosures should require inventors to describe how the invention itself can relate to the company’s products and business plan.
Also, inventors should be prepared to highlight which parts of the invention are most likely to have significant customer demand. It’s important to note that popular features customers look for in products are likely the same features competitors will want to incorporate in their own models.
Even more, inventors must include the status of the product embodying the invention. In other words, they should describe whether the product is completed or under development. If it is under development, they should include a detailed timeline leading up to completion. Inventors should also identify the product’s embodiments that are most eligible for current and future commercialization. Lastly, inventors should fully describe alternative embodiments that other companies might produce to achieve the same outcomes as the original invention.
Because inventors may not have all the information, it’s important to seek knowledge and experience from other departments of the company as they may contribute valuable information.
Explore Different Perspectives
The best way to identify robust invention disclosures is by exploring different perspectives. While the company’s perspective is most relevant to its business goals, it is beneficial to consider invention disclosures from outside sources.
- The Company’s Perspective
First and foremost, you should always evaluate every invention disclosure from the company’s perspective. It’s crucial that you look at the current importance of the technology and how the technology might become important in the future. To most accurately predict the value of a technology to a company, company leaders should acknowledge the importance of feedback from the inventors themselves and other company personnel who understand the product best.
It’s also important to note the current stage of development for the products included in the invention. If various components are under development, the invention may require additional applications. So, it is crucial to strategize according to the product’s needs and developmental stage. If embodiments need to be altered or added, there should be plans to file follow-up applications as the product adapts and is introduced to the market.
- The External Perspective
In addition to the company’s perspective, it is equally important to evaluate each invention disclosure from a perspective independent of the company. As stated above, technologies that are not necessarily key to the invention can still hold value because they can be used for sale or licensing to other companies.
So, it’s crucial to get a marketplace perspective that can provide insight into how valuable the patent could be. This examination should also include the number of parties who may potentially infringe on the technology.
The Strength of the Patent
A patent’s strength comes from its patentability, enforceability, and thorough evaluation of each invention disclosure. The most effective ways to achieve this is by identifying any known prior art and searching for patentability.
It’s also important to consider how easy it is to detect infringement. If a patent is difficult to enforce because of its challenging infringement detection, you may want to seek expert analysis to pursue litigation.
Form a Strategy
To gain higher budgets for the preparation and execution of patent applications, it’s crucial to understand that strong disclosures should have one or more of the following:
- Clear connections to the current and future business goals of the company,
- Value outside of the company (licensing or sale), or
- Potential strong and enforceable patents.
Drafting the application should include taking all of the necessary information into consideration to best form a well-rounded strategy for developing its application.
In the end, strategically developing patent portfolios can significantly benefit a company by garnering its intellectual property value. Keeping this information in mind will undoubtedly aid in developing a patent strategy most capable of adding value to the company through strong patent portfolios.
If you would like to learn more about building a strong patent portfolio, contact Stanzione & Associates, PLLC at (202)349-1124 or https://www.stanzioneiplaw.com/ today!
Stanzione & Associates, PLLC is an intellectual property law firm with over 30 years of experience protecting corporate entities, start-ups, and individual inventors. Stanzione & Associates, PLLC stands above other Intellectual Property law firms because of Mr. Stanzione’s extensive experience working at the United States Patent and Trademark Office (USPTO) as a supervisory level patent examiner. At Stanzione & Associates, PLLC, we have the insight and long-term relationships with the USPTO to work well with patent examiners to achieve quality patents.
