Authored by Jeffrey A. Berkowitz
Patent portfolios provide value to a company in many ways. They protect products from infringers and help maintain market share.
To achieve maximum potential, however, patent portfolios must be strategically developed. Portfolios developed bearing in mind strategic considerations provide more value to a company.
Start by Asking the Right Questions
A strategic approach begins by gathering the right information to evaluate each invention disclosure. By correlating disclosures with business objectives and technical objectives, the portfolio is more likely to include strong patents aligned with business goals.
Inventors should explain how an invention relates to any commercial product. But more important for developing strategic portfolios, the inventors should also indicate which features of the product are likely to have high customer demand. Features sought after by customers are also likely features that competitors will want to include in their products.
Consider the Strength of the Patent
Patent strength is not limited to early consideration of prior art when drafting patents. Patent strength also reflects ease of detecting infringement. If infringement is difficult to detect, then enforcing the patent becomes difficult and the patent may have little value.
Creating a Strategy
After disclosures have been evaluated and the criteria considered, the stronger inventions may warrant higher budgets for preparing and prosecuting patent applications. Again, stronger inventions include those that affect the company's business goals, hold potential value outside of the company, or have the most potential for strong and enforceable patents.
Finally, the application-drafting process should make use of the information considered and collected in this process to inform the scope of the claims and the overall strategy for developing the applications.
Conclusion
Developing patent portfolios strategically can help a company unlock value from its intellectual property. Bearing in mind some of the outlined considerations when developing a patent strategy can help build strong portfolios that provide your company substantial value.
Originally printed in Ahad Ha'am on February 14, 2014. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
