5 Strategies That Top Patent Players Use To Boost Their Patent Portfolios

The value of a company’s patent portfolio cannot be overstated. Patents are a competitive barrier and can also generate licensing revenue. Most marketing and advertising mavens appreciate how having a ‘patented technology’ placement in an advertising campaign adds to the credibility/sale of the product. Financial gurus attest to the increased valuation of a company, based on its patent holding.
Most technology companies have internal initiatives to build their patent portfolio. However, some of these initiatives are more successful than others. Here are 5 proven strategies that some of the largest patent holders adopt to maximise their patent footprint.

Culture: Patent Savvy

An essential pre-requisite for building a formidable patent portfolio is to create an environment that fosters creativity and innovation. However, that alone is not enough. It is crucial to ensure that your researchers are extremely patent savvy. Inexperienced inventors can easily miss patenting opportunities in their research works. Conversely, they may submit invention disclosures, which are of little value to the company, leading to sub-optimal utilisation of the company’s patenting budget. Top patent filers make it a point to invest in educating their researchers about the patent process through trainings, seminars, internal documentation/manuals, and ‘go-to’ people, and the resultant streamlining of the patent process more than makes up for this investment.

Many companies have successfully leveraged incentives such as rewards and recognitions to foster a patent-savvy culture. Besides monetary incentives, other creative ways of incentivising and engaging inventors can give a huge boost to the company’s patenting activity, sometimes at little or no additional cost! One top patent holder in the mobile and wireless space adopted a strategy of publishing the names of their top inventors on a large wall at the office entrance, which is now one of the most coveted recognitions, and inventors company-wide vie to get their ‘names on the wall.’

Process: Simple and Transparent

The simplicity, clarity and transparency of the patent process have a direct impact on inventor engagement. Simplified templates, forms, manuals and training help inform and engage inventors. In addition, the patent process itself must be simple enough (i.e., without legalese or assumptions of prior knowledge of legal concepts) to work for the largely untrained first-time inventors. As far as possible, inventors should not be expected to learn and use complicated patent workflow tools that may have a large learning curve.

Further, it is critical that the patent process must make patent review decisions transparent. Inventors should know why the company filed (or did not file) certain invention disclosures as patent applications, and what the inventors can do to improve their subsequent disclosures. In the absence of such feedback, inventors tend to feel discouraged from investing their precious time in filling Invention Disclosure Forms in the future.

Team: Select the Right Patent Committee

A process is only as good as its implementation – so it is essential to select a balanced patent committee for implementing the patent portfolio growth initiative. Most companies recognise the need to have R&D and legal executives in the patent committee. In addition, many have seen the benefit of finance and marketing executives informing the development and growth of a company’s patent portfolio. Finance representation is important to keep an eye on the budget, manage spend and inform decisions based on available funds. Further, marketing executives are often the first to know the features, considered desirable by customers, and this knowledge can be leveraged in assessing the commercial viability of the company’s inventions.

Prioritise: Patent Triage

All inventions are not equally important and companies must learn to discern the potential crown jewels of the patent portfolio from the good-to-haves, and allocate resources accordingly. Many companies like to follow a tiered system of categorising their inventions. The top tier represents ‘flagship inventions’ that align closely with the strategic direction of the company and often pertain to breakthrough technology that will differentiate the company’s products from the competition. These are aggressively pursued by the company using the best available law firm(s) and it considers filing the application in multiple jurisdictions, e.g., the European Union, the USA, China, Japan, etc.

For other inventions that are not core to a company’s strategic direction, the firm typically tries to minimise the costs of filing such patent applications by using less expensive law firms and considering provisional application filings. For highly context-specific inventions that are unlikely to be used by any competitor, the company may consider making a defensive disclosure to create prior art, so that a competitor doesn’t independently seek a patent on the same.

Spend Smart: Don’t Be Penny Wise But Pound Foolish

In certain instances, additional discretionary spend can lead to significant overall cost savings and/or increase in ROI. For instance, it is not necessary for companies to conduct patentability searches or file provisional applications for their patent applications. However, experience has shown that patentability searches provide knowledge of existing prior art that often results in better applications and claims, a shorter prosecution period and an early grant. Similarly, filing relatively inexpensive provisional applications can help manage the patent spend better and avoid rush patent filings by reserving the right to file a regular (or ‘non-provisional’) patent application for the grace period of one year. The company may use this grace period to monitor the market evolution and judiciously choose the applications it wants to pursue thereafter.

Depending on the volume of filings, even if about 10% of non-provisional applications are not filed based on the patentability search results or decisions to abandon provisional applications, you would have recovered the cost incurred for the searches and provisional applications.

Sumit Mudgal is the chief strategy advisor for BraMoh Law, a New York law firm providing cross-shore legal solutions. Prior to this, he headed the IP operations at Thomson Reuters – Pangea3. With a degree in electronics engineering from IIT, Mudgal started his IP career at Evalueserve in 2002.