Two processes that are key to maximising the value of your patent portfolio are:
• Reviewing existing patents and patent applications with respect to current and future business needs
• Evaluating how advances in research and development should be protected
In this article, we discuss key considerations for both processes.
Reviewing your existing portfolio
Regularly reviewing existing patents is an effective tool to determine whether your patents and pending applications are still adding value to the business, and to ensure that your portfolio continues to be aligned with your commercial objectives. The audit should achieve the following objectives:
• Promote investment into patents that protect business interests
• Reduce expenditure on patents that have become of reduced value
• Identify any “gaps” in your portfolio
Patents (and, in some jurisdictions, pending applications) generally need to be maintained by paying renewal fees. In some jurisdictions, these fees increase significantly as the patent ages. Most businesses improve and develop their technology, which in some cases can cause older patents to become less aligned with the wider company objectives. This issue is exacerbated by the long duration of patents, which is 20 years from the filing date of the patent. Patent owners are encouraged to audit their intellectual property portfolios regularly to avoid spending resources on outdated rights, and divert their resources into protection of current and future business needs.
However, it is worth noting the important point that even if a patent does not protect a business’s current products, it may still add value if it covers those of a competitor. This can be a useful bargaining chip for a company to have, and can even provide an income stream through licencing. Consequently, an essential part of reviewing existing patents is considering how they can be leveraged against competitors, to provide the full picture as to how they can add value.
Finally, it is important to look for the “gaps” in your portfolio – are there easy ways in which competitors can work around your granted rights? If they did, what would be the extent of the commercial damage? And can these “gaps” be plugged by pursuing further patent applications?
Protecting new inventions
Complementary to reviewing existing patents is identifying and protecting new inventions. The main goals of evaluating how developments in research and development should be protected are:
• Encouraging researchers to consider the commercial opportunities of their work
• Identifying patentable inventions and other protection opportunities
• Balancing the potential value of a patent against the investment required
When it comes to spotting patentable inventions, innovators are often victims of their own success. By this, we mean that “inventive” in the world of patents is defined with respect to a fictional person skilled in the art, who possesses ordinary skill but lacks creativity – hardly a typical characterisation of researchers. Innovators should be encouraged not to dismiss seemingly incremental developments within a technical area, as even these have the potential to meet the legal requirements to achieve patent protection.
When making the decision of whether to file a new application, as many will know, it is important to consider how the scope of the application maps onto current and future commercial products, how it maps onto the activities of your competitors, and whether it plugs any “gaps” in your current portfolio. However, it is also worth considering the alternative – what happens if you do not file a new application, and to what extent would this be detrimental to your business’s activities? Some might decide to hold off filing a patent and choose instead to rely on trade secrets. Whilst these can provide some level of protection, there are limitations to this form of protection.
To conclude, for companies with an existing patent portfolio: consider how your existing cases map onto your products and those of your competitors, look for any “gaps” in your protection, and investigate how these could be plugged by pursuing new patent filings.