Developing a patent strategy – as part of a broader company strategy for protection intellectual property – should be an important component of the company’s business plan. Experience shows, however, that for many companies the patent strategy is done “on the fly” and reactive, rather than executing a defined comprehensive strategy.
Developing the company’s patent strategy is like the development of any business plan. It requires defining the goals of the patent strategy and then setting out the execution plan.
Aligning Patent Goals with Business Strategy
The initial part of the plan is to make sure that the patent goals are aligned with the overall business strategy. Most company managers will have (or should have) an idea of the business goals of the company, the key industry players, such as competitors, potential partners and customers. They will also know the technology options available to them and also the direction of product development of the company. The patent strategy will need to reflect these goals. Most importantly the strategy should also set out how the patent portfolio will be used. Traditionally patents were often considered “offensive weapons” to protect unique technology and for assertion against competitors. More recently, patents have become enables for business development.
Patent Strategy Options
- Offensive – this strategy assumes that a company’s patent portfolio will be used as a strategic “weapon” against competitors or potential competitors to prevent copying of technology.
- Defensive – this strategy uses patents as a shield to defend a company against patent infringement claims asserted by other companies. The defensive patent portfolio can be used both to show that ideas were already “prior art” before the asserted patents were filed, or can be used to file a counterclaim against the asserting company, alleging that the company’s own patents are being infringed.
- Marketing – a wide-ranging patent portfolio covering a company’s current and future product development portfolio shows evidence that the company is being innovative. This is particularly true if one or more of the major examining patent offices, such as the European Patent Office or the US Patent and Trademark Office, has found little prior art in their search and/or has indicated that the patent should be granted.
- Licensing – this strategy acknowledges that in many modern technologies, it is simply not possible for one company to develop all of the intellectual property required to exploit the technology. Companies need to license technology to produce their products. For the patent holders, the licence fees can be a valuable source of revenue.
- Partnerships – patents can cement a partnership between companies to enable development of technologies. Joint research and development agreements are based on “background intellectual property” which the partners bring into their project, and the agreement can set out how the “work results” from the project are exploited.
In practice, these options are rarely mutually exclusive. Some patent applications in the portfolio may be seen as being potential candidates for future assertion against competitors whilst others are merely used for marketing purposes or filed to demonstrate background intellectual property before entering into a joint research agreement with another company.
The exact “mix” of strategies will depend very much on the company concerned. If you are interested in understanding better how to develop and manage your intellectual property portfolio, then feel free to contact us to arrange a consultation.
