Patent Portfolio Strategy and Management
When considering filinging for an international patent application, there are three variables to take into account - business criteria, legal criteria, and cost criteria.
The two variables that drive patent value are the technology’s value and the manner in which the patent’s drafted.
There’s a wide range of patent prosecution services that meet the minimum threshold to qualify as being quality work and, therefore, being essentially up to the standards of trade. Many applicants think that a patent is a patent and that if an attorney gets a patent to draft, nine out of ten attorneys are gonna draft the same patent or prosecute the patent in the same way.
You always want to be pushing out to the limit of how far you can go in terms of futuristic applications because the further you can get your thinking into the future, the more likely it is that you’ve got fewer pieces of prior art to deal with.
One of the potential consequences of having a poorly drafted patent, or a portfolio of poorly drafted patents, is you will have these assets that you’re scared to enforce.
The first thing that a company could do to improve the value of the patent portfolio is really to try and get the most out of the resources that it has.
Most people when they come in to see a patent attorney, what they're asking about is "Can I get a patent?" Another question is "Can I sell my product without infringing somebody else's patent?"
We often have clients come in to us and say, we need you to define our patent strategy. Our board is asking for a patent strategy, our investors are asking for a patent strategy, and the term patent strategy can mean a lot of different things to a lot of different people.
Typically when a client approaches us one of the first things we like to address with them is patent strategy, and part of the patent strategy is procurement. Another leg of patent strategy may be patent management but when we’re looking at procurement there are really two ways we can view procurement.
Many corporations have fixed budgets for drafting applications or filing amendments. While this is very convenient for administrative purposes, it often can backfire.
What you would hope to do is that as you progress through prosecution, you would identify the cases that are low value opportunity and you would reduce your budgets on those.