Developing a Patent Strategy

For many technology companies, developing a patent strategy is an important component of the business plan. However, for many the approach for developing a patent strategy is more happenstance than execution of a precisely defined plan. To help develop a patent strategy, this document provides a checklist for getting organized in preparation for developing a comprehensive patent strategy for the company.

Starting in the development phase, the patent strategy identfies 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 company and within industry).

• Determine whether a patent portfolio 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.

• Meet with a patent attorney to align goals, industry information, technology information, and core portfolio use strategy.

The evaluation process begins by mining and analyzing intellectual assets within the company. In this process, a 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 that are familiar with the business and patent objectives and that can evaluate the value (tangibly or intangibly) of the identified intellectual assets. Here, the company should:

• Identify team members that will lead the mining and analysis process.

• Identify employees that 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, non-disclosure and cofidentiality 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 risk analysis with attorney involving competitor studies.

• Prepare budget for 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 company builds (i.e., prepares and files) 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 (i.e., core or foundation patents for a technology area), fence patents (i.e., patents that surround a core patent in a technology area), design-around patents (i.e., patents directed to alternative solutions in view of existing patents), and portfolio enhancing patents (i.e., other patents that add value, such as improvements or enhancements). Note that each patent may have a unique value proposition for the company.

• Establish a budget for patent portfolio development.

• Draft invention disclosures (see attorney for Invention Disclosure Form).

• Critically evaluate each invention disclosure in the context of the patent strategy.

• Weigh risks vs. reward of a prior art search.

• Evaluate benefits and risk of provisional vs. utility patent application with attorney.

• Forward invention disclosure to attorney for patent application drafting.

• Over time, determine whether to conduct further competitive analysis to study industry trends and technology directions and identify patent portfolio coverage in view of same.

• Over time, evaluate risk vs. reward 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 a company may move to the deployment phase. The deployment phase may include licensing all or part of a 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 a company should consider:

• Review patent portfolio to identify those assets that company can sell for cash or use to spin out new business.

• Study competitor products for infringement considerations and determine risks vs. rewards of cease and desist strategy or licensing strategy.

• Evaluate the strength of competitor patent portfolios to access the potential for counter-attacks.

• Determine risks and benefits of various enforcement options (cease & desist; cross-license; etc.).

The outline above gives a 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 be reap many rewards for the time, money and effort spend early on as their business continues to grow and prosper.

Rajiv Patel is a partner in the intellectual property group of Fenwick & West LLP. His practice includes helping companies develop, manage and deploy patent portfolios. He is registered to practice before the U.S. Patent and Trademark Office. Fenwick & West LLP has offices in Mountain View, CA, San Francisco, CA and Boise, ID.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances