Five Attributes of Companies With Strong Patents
In our role as patent counsel to big companies, small companies, and individual inventors, we are fortunate to see how certain patent holders are able to obtain strong, valuable patents. Based on our experience, here are five key attributes of those who have successful patent programs:
1. They Understand The Economic Advantage Of Their Patents
Successful patent holders do not simply acquire patents to hang them on the wall for display. They acquire them to enhance their bottom line by excluding competitors from economically significant technologies. They understand the competitive advantage that their patents provide, and at least qualitatively, how it enhances their market share. Conversely, they understand what technologies are not worth patenting because competitors can easily design around or live without them without compromising their market share.
2. They Devote In-House Technical Personnel to Patent Issues
Successful patent holders dedicate technical personnel to understanding the company’s patent strategy and interfacing with patent counsel. Technical personnel make key contributions not only in inventing, but also in reviewing prior art, identifying competitive design-arounds, determining which technologies are worth patenting, and understanding the competitive landscape. During prosecution, technical personnel can provide invaluable assistance in responding to office actions, and in particular, providing guidance as to what claim amendments will help distinguish the prior art without compromising the economic value of the claims. Many successful companies make it a job requirement for certain in-house personnel to devote a portion of their time to patent issues.
3. They Continually Monitor Their Competitors’ Patenting Activities
Successful patent holders keep up with their competitors’ patents and patent application filings. This information can help identify where competitors are going in the market place so that appropriate offensive and defensive patent strategies can be developed. With the new post-grant review process in the United States, competitive monitoring is more important than ever because there is a limited nine-month window of time after issuance during which a competitor’s patent can be challenged in the Patent Office based not only on the prior art, but also on grounds of insufficient written description, lack of enablement, and indefiniteness. After that, insufficient written description, lack of enablement, and indefiniteness can only be raised in court and only if the patent holder engages in conduct that creates a “case or controversy” so that the court has jurisdiction over an invalidation claim.
4. They Continually Assess and Re-Assess Their Patent Portfolios
Patent applications are filed at a specific point in time after which the marketplace and technology continue to evolve. Successful patent holders revisit their pending applications and issued patents to determine how they relate to current market conditions. Some markets may no longer be important for certain technologies. Some technologies may have been leap-frogged by developments occurring after a patent application was filed. Claim strategies may now be out of date.
5. They Continually Assess and Re-Assess Their Patent Expenditures
This is a corollary to number 4. No one has an unlimited patent budget. As with any asset, it is important to focus resources on those patent assets that are likely to provide the greatest return on investment. It is expensive to maintain patents and patent applications domestically and internationally. Products may have been discontinued and may no longer need patent protection. Some patents may no longer be worth the maintenance fees or annuities required to keep them in force. The market in some countries may no longer justify the prosecution expenses required to seek patent protection for certain technologies.
The disclosure of a patent or patent application is static. Once the application is filed, the claims may be amended if the amendments are supported by the originally-filed application. However, the subject matter of a patent application cannot be changed or supplemented once the application is filed. In contrast, technology and the economy are dynamic and change at an ever increasing rate. As a result, the value of patents and patent applications is dynamic. Companies with strong patent portfolios recognize this and adjust their patent strategy accordingly.