Business and patent portfolio goals
Starting in the development phase, the patent strategy identifies the key business goals of the company. Clear business goals provide a long-term blueprint to guide the development of a valuable patent portfolio. In particular, the company should :
- list the business, technology, and product goals for the company;
- identify key industry players (competitors, partners, customers);
- identify technology directions (within the company and within the industry);
- determine whether a patent portfolio should be used offensively (i.e., asserted against others, revenue generation, etc.), defensively (i.e., used as a shield or counterclaim against others who file suit first), for marketing purposes (i.e., to show the outside world a portfolio to demonstrate company innovation), or a combination of these;
- and meet with the attorney to align goals, industry information, technology information, and portfolio use core strategy.
Evaluation of company assets
The evaluation process begins by mining and analyzing intellectual assets within the company. In this process, the company organizes and evaluates all of its intellectual assets, such as its products, services, technologies, processes, and business practices. Organizing intellectual assets involves working with key executives to align the patent strategy with the business objectives. Here, the company should :
- identify team members who will lead the mining and analysis process;
- identify employees who create intellectual assets for the company;
- identify the intellectual assets. To help determine this, gather and organize documented materials. Examples of documented materials include business plans, company procedures and policies, investor presentations, marketing presentations and publications, product specifications, technical schematics, and software programs. It may also include contractual agreements, such as employment agreements, assignment and license agreements, nondisclosure and confidentiality agreements, investor agreements, and consulting agreements;
- identify the anticipated life span for each intellectual asset;
- identify the market for each intellectual asset;
- identify products/product lines incorporating each intellectual asset;
- identify those intellectual assets best suited for patent protection;
- review the risk analysis with the attorney involving competitor studies;
- and prepare a budget for the patent strategy and patent procurement
While the evaluation phase is in progress, the company can move into the procurement phase. In the procurement phase of the patent strategy, a start-up company builds its patent portfolio to protect core technologies, processes, and business practices uncovered during the evaluation phase. Typically, a patent portfolio is built with a combination of crown-jewel patents, fence patents, design-around patents, and portfolio enhancing patents. Each patent may have a unique value proposition for the company:
- Establish a budget for patent portfolio development
- Draft invention disclosures.
- Critically evaluate each invention disclosure in the context of the patent strategy.
- Weigh risks versus rewards of a prior art search.
- Evaluate the benefits and risks of a provisional versus utility patent application with the attorney.
- Forward the invention disclosure to the attorney for patent application drafting.
- Over time, determine whether to conduct a further competitive analysis to study the industry trends and technology directions and identify the patent portfolio’s coverage in view of the same.
- Over time, evaluate risks versus rewards of studying patent portfolios of competitors and other industry players to identify how to further strengthen its patent portfolio.
A company that values its intellectual assets may set aside time, money, and resources to further enhance its patent portfolio. To do this, the company may move to the deployment phase. The deployment phase may include licensing all or part of the patent portfolio to others in the industry or to alternative applications for the technology. Alternatively, it may include asserting rights established by its patents, such as through litigation. The deployment stage often includes high-level management involvement. In this stage, the company should consider the following :
- Review the patent portfolio to identify those assets that the company can sell for cash or use to spin out new business.
- Study competitor products for infringement considerations and determine the risks versus rewards of a cease-and-desist strategy or licensing strategy.
- Evaluate the strength of competitor patent portfolios to access the potential for counterattacks.
- Determine the risks and benefits of various enforcement options (cease-and-desist, cross-license, etc.).
The outline above gives just one overview of a potential patent strategy. With any patent strategy, some key considerations will include commitment from all levels of management and execution of the strategy once it is assembled. Companies that take the time and effort to develop a patent strategy will reap many rewards for the time, money, and effort spent early on as their business continues to grow and prosper.