Companies have a lot of valuable assets, especially in their early years. Identifying technology areas worth investing in is the first and most important step in designing a winning patent strategy. An error at this stage will have devastating effects that can last for a patent lifetime, and in many cases even beyond the expiration date. The question is, how can we avoid making bad decisions? Below, we’ll explain the factors to consider when developing a patent strategy.
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What is Patent strategy?
A company’s patent strategy is a set of actions that a company takes in order to secure and position its inventions, innovations, and/or intellectual property. Patent strategy includes information about which innovations you wish to grant patent protection to, the markets in which you want patent protection, and who you hire for your patent applications.
Patent strategies are similar to business strategies. They often require a pre-analysis of the status in order to identify opportunities and risks.
The company’s size, industry demand, industrial demand, and business needs will determine the type of patent strategy it chooses. Large firms often develop comprehensive patent strategies because they have the resources and money. Smaller firms, on the other hand, can implement cost-effective strategies.
Reasons to develop a patent strategy
The development phase of a patent strategy begins with analyzing your business strategy and understanding the technical landscape. To help you develop a solid patent portfolio, your business goals will be the long-term roadmap. You can also review the patenting activities of your industry partners, customers, and key industry competitors to gain a better understanding of the patent landscape.
Millions of patent documents have been published. They are all accessible through public databases like Espacenet. This information can prove to be a valuable resource for R&D and product development. To see what your competitors are doing in the market, it can be helpful to patent search, which involves looking at their patents and applications. This is called patent landscaping. Patent watching can also be a valuable tool. You will receive alerts whenever there are applications published by others in the same technological areas as yours. A great way to get valuable commercial information is to include patent searching and monitoring in your patent strategy.
The core of a patent strategy identifies the countries in which you will file patent applications for each technology area relevant to your business strategy. Different technologies may have different importance in your business strategy. Therefore, different patent protection levels might be appropriate. You might file a U.S. Patent Application for your core technology, then a 12-month International Patent Cooperation Treaty application (PCT), which will result in national patent applications in countries that are relevant to your key markets, as well as those of your key competitors. You may choose to only protect your country and not those of your competitors for a second-level technology.
Once your patent strategy is in place, it’s time to start building a patent portfolio to provide the right level of protection for each of your technologies or processes that are necessary to deliver your business strategy. You can do it consistently and efficiently without needing to go through the entire process of deciding where to file patent applications.
The patent strategy must also include an approach to licensing. Do you wish to license all or part of your patent portfolio to other companies in the sector? How do you plan to enforce the rights granted by your patents? What are the triggers to initiate patent litigation? Which competitors? Which countries and against whom? This stage should include evaluating the products of competitors to determine if they may infringe on your patents. Patent litigation can be expensive and time-consuming. Therefore, a patent strategy should consider whether you might need litigation insurance to cover the costs of taking or defending patent litigation.
If patents or patent applications are not relevant to your business strategy, you can sell them. You can receive royalties payments. Are you able to support your business strategy by letting go of patents that aren’t essential to your business, or keeping them? How can licensing help your business strategy and pay for future patent strategies? Don’t assume patents are just a cost.
R&D requires significant investment in staff time and resources. It is therefore sensible to have a strategy in place for protecting the IP generated by your R&D team. The right patent strategy will help maximize the return on the investment made in R&D.
How to develop an Effective Patent strategy?
Before any research or development is completed for your company, intellectual property protection must be in place. An extensive patent strategy not only protects your company’s inventions but also establishes your company and brand in the marketplace. Here are five easy tips on how to quickly develop a patent strategy.
#1. Filing early for patents
The America Invents Act (AIA) introduces the “first-to-file” patent regime in the USA. This gives priority date to an idea to the party that files it first with the U.S. Patent and Trademark Office. The AIA is a departure from the “first to file” patent regime that gave priority to an idea according to the invention date.
Filing early is absolutely critical to getting your idea in first, and getting your patent underway as quickly as possible. The USPO permits the filing of a provisional application for a patent, a cheap preliminary filing that allows you to claim your product as “patent pending“. To secure your priority date, it is strongly recommended that you file for a provisional patent application before the publication of the idea at a conference or on any other site that could be considered public.
#2. review Employees agreements
Check out the employment and independent contractor agreements for your startup. Your employees and contractors should be obligated to transfer their rights to any inventions they create during their work to your company. If the agreements between employees and contractors don’t expressly obligate them to give over any invention rights, it may be difficult to get a patent for an invention. Additionally, you should plan to keep a record of all assignments at your patent office. This will allow you to access the official ledger that shows who owns your patent rights. At this point, It is important to ensure confidentiality agreements have been signed by your employees regarding their work products at your company. By signing a nondisclosure agreement (NDA) to prevent information leakage.
#3. Form a team to review new inventions quickly
You need to decide whether the new developments are worth patenting, as filing for a patent on a concept or technology can be costly. A diverse group of people should be included in the discussion when forming a team. This includes someone from sales, engineering, marketing, and management. It is crucial to keep sales and marketing people informed about patents, as they are often the first to announce new inventions outside of the company. If your patent team agrees that the development merits patenting, contact your patent attorney. Who will then determine if the invention is patentable and if so, prepare and file a Patent Application?
#4. Keep your documents organized
It is important to organize everything once you have begun to seek patent protection for your inventions. This will allow you to track what intellectual property your startup has created. This means that you should keep copies of all your intellectual property-related documents (e.g. information disclosure forms, employment agreements for inventors listed in your patent applications, technology licenses, and other contracts), in an organized business file. You can keep this information in a simple folder on your computer, or in a more sophisticated document management system. It will be much easier for potential investors to find the information they need.
#5. Reduce the likelihood of litigation
With over 6,000 patent lawsuits being filed in 2013, intellectual property litigation in America has hit an all-time high. The rise in litigation activity over the past few years was mainly due to the emergence of non-practicing entities (also known as “patent trolling”). These entities buy patents solely to enforce the rights through litigation or forced licensing. However, a lot of patent litigation is still initiated by competitors and, in the case of startups, incumbents who want to stop the growth of young competitors through costly and disruptive litigation. A company can expect to be sued as soon as it is successful.
As an inventor you can benefit from having a strong patent portfolio to protect against litigation. This gives you the ammunition to counter-suit your competitor and to negotiate with partners and other collaborators in the market, allowing you to cross-license patents. This will avoid infringements that potentially result in litigation.
factors to consider when developing a patent strategy
The process of developing a patent strategy is similar to that of a business strategy. Your patent strategy should be more focused on the patent portfolio of your company than the entire business. Here are the key factors to consider when developing your patent strategy.
1. Type of protection
When planning your patent strategy, it is important to differentiate between these:
- The type of patent that your company creates (utility, design, or plant),
- The person responsible for creating it.
With the help of a patent attorney, you may want to consider conducting a patent search of the relevant patent databases to determine the risks associated with the use of your patent.
2. Your Company’s Size
Your company’s size is the next factor that will determine your patent strategy. If you are a startup, then you need to decide if you really want to invest in protecting your patent as the process can be complex. on the other hand, if you’re a large company, you will need to determine the ownership rights and publication rights for your patent. Your patent strategy will likely be more complex the larger your company.
3. Market Scenario
Your goal as a business is to survive in the market and make a profit. You must ask yourself whether you can make profits from your patent on the market when developing the strategy. It is important to determine the barriers that would prevent you from entering the market and if your product or service would be able to compete in it. Your patent strategy should be shaped by the market situation for your product/service.
4. Your Company’s Business Strategy
It is obvious that your patent strategy must be aligned with your business strategy. These include how much money you will allocate for intellectual property within your company and what your goals and objectives are for your patent portfolio. It can lead to a wastage of resources if there is a disconnect between patent and business strategy. It can even lead to the loss of valuable patent assets. Your business strategy has a major influence on your patent strategy.
Now go Build Your IP Assets
All companies should focus on time and energy in gaining a solid understanding of the intellectual property process. This will help you save time, money, and effort when creating a product or service and obtaining patent protection.
You will be able to better understand the market your company is in by setting your goals and reviewing your patent strategy for success. To maximize the return on your intellectual property investment, you should spend equal time developing your patent strategy.
PatentPC has a lot of experience working with startup businesses to develop patent strategies. If you are interested in us helping you develop a patent strategy, please contact us