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Strategic Patenting

Patents, like every other company asset, need to be tracked and appraised

3 min read

Every day high-tech companies receive offers for ”strategic patenting” and ”patent mapping” services and ”comprehensive patent analysis platforms.” What exactly are these things?

The idea is simple. Instead of handling patent problems ad hoc, you devise a strategic plan—that is, one that establishes priorities so that you can jettison patents and filings not worth pursuing and defend yourself against the patents of others. You consider all the associated profits and losses comprehensively, as you would with finance or real estate.

Strategic patenting is a tapestry woven from disparate threads: older conceptions of patent management; studies proving that some patents are basically worthless; a realization that the best protection for a given product involves not one but many patents (a ”patent fence”); the idea of defensive patents (and ”patent truces”); the fairly new ability to search out existing patents and published patent applications more easily (and to present the search results in colorful charts and patent maps); and, to a certain degree, patents being asserted against non-high-tech companies and service providers.

Companies now realize that their patent portfolios can generate money even if a given patent is not being used for a new product or service. A patent ”hidden in the attic” may be worth something and can be sold or licensed—even to a competitor. Nowadays, it is simply unacceptable for management to misvalue its patent arsenal, either offensively or defensively.

Consider a hypothetical case: You invent the Jpod, a handheld electronic product for which one U.S. patent has been issued, two more are pending, and many corresponding applications are in the works in patent offices overseas, as shown in the table ”Portfolio.”

Entry No. 1 in this patent map reveals that the basic functionality of the Jpod is fairly well protected and the cost to pursue foreign patents is reasonable, given the scope of the U.S. patent. But entry No. 2 shows that though a lot of money has been spent, the patent hasn’t been issued and in any case it would cover only the user interface of the product. Maybe the idea of protecting the user interface in other countries should be abandoned, given the trouble experienced in securing even a U.S. patent. Maybe the U.S. patent should also be scrapped. Has the interface changed so much that money is being spent on patent protection for something the company doesn’t even use anymore? If so, can the patent be licensed to someone else? Entry No. 3 can be evaluated in a similar manner.

This fairly simple map may also reveal something important about entries that are not present. Suppose engineering has touted a particular feature in the Jpod, say, a new power management circuit that lets the product run longer on a single charge. A strategic planner would ask why the spreadsheet has no entries covering this circuit, whether it’s still possible to protect it, and what other things the engineers are working on right now. Project management is needed because the engineers are too close to the work and management too far from it.

The second step is to analyze what other companies have, both on the market and in the R&D pipeline. It is relatively easy to search out the patents and pending published patent applications of competitors. You can track whether or not your own patents have been cited in later patents by others.

It would certainly be good to know whether anyone else is seeking patents on a technology clearly adapted for the Jpod. There are services that will help you find out about such things; all you have to do is ask them to notify you of relevant new patent applications.

Other key questions: Are there basic patents predating yours that cover Jpod-like products? Are they still valid? If not, are there any previously patented features you can now incorporate into your product? For still-valid patents, are the patent owners litigious? Are you infringing? Obviously, you’d need more than this simple spreadsheet, but the basic idea would still be the same.

The third step involves predicting the future. Where is the market heading? Will your patents protect you there? Who is suing whom in your market and what ideas should you stay away from? When will your patents expire and how will you then protect against knockoffs?

Strategic patenting, then, is simply the confluence of patent law (what can be patented and how) and project management, with quality assurance ideas mixed in. And all these concepts apply, to a certain extent, to other species of intellectual property: trade and service marks, copyrights, trade secrets, licensing programs, and the like. All intellectual property must be managed.

Lastly, don’t spend lots of money on colorful reports and maps only to file and forget them. Patent-mapping services provide lots of data, but it is up to management to analyze the data and then act—and keep doing it.

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