The global pandemic forced companies of all sizes to reimagine how business gets done, with a strong focus on cost containment as many industries experienced the impact of shutdowns. But organizations that ignore intellectual property protections now may face financial consequences in the future.
Eric Morehouse, patent attorney and founder of AIPI Solutions in Washington, D.C., says that proactive patent planning is one of the most strategic moves a corporation can make to protect both intellectual and financial assets. He adds that doing so can both provide security for current inventions and reveal areas for expansion and growth in a category, staking claims for future development.
“Pulling patent lawyers in after R&D has already developed a product is the most common route. But it’s a defensive, reactionary patent activity,” Morehouse explained. “The smarter, more strategic approach is to obtain a clearer understanding of available rights through a comprehensive patent landscape survey during product ideation.” In this way, all new features of a patent and potential existing gaps in patent rights are addressed in one, all-encompassing new patent filing.
“Bundling numerous adjacent concepts in one patent filing both mitigates costs and ensures the patent footprint is wide enough to support achievement of business goals,” Morehouse added. While initial up-front costs are higher, the method nets exponential returns by protecting against potential infringements or competitors securing patents on simple modifications of your original creation. As well, keeping applications pending provides additional value over time because they can be amended with continuations or additions rather than initiating new, separate filings.
Without conducting thorough patent research and establishing ownership of an idea up front, resources can effectively be wasted. By waiting until the end of a lengthy R&D process to protect intellectual property, a company may find the same or a similar concept already exists by the time patent exploration begins.
But new product development isn’t the only way to secure or increase patent value. A valuable corresponding strategy involves a review, at least annually, of the existing patent portfolio to identify savings or revenue opportunities. Obsolete inventions or those covered under another patent should be allowed to lapse, negating the need for patent maintenance fees, Morehouse says. As well, checking active patents against competitor filings may reveal infringements to be pursued through legal channels.
Mapping a strategic plan and timeline for filing is also key in spending budget effectively. The plan recommended most often involves filing in-country first, then filing a PCT patent, and then filing in specific countries in which your company plans to commercialize. This helps to maximize the amount of time a patent can be pending, allowing for continuations and actions against infringers during the process.
Smaller companies sometimes bypass patent attorneys, believing skipping their involvement will save them money, especially if they are convinced that their invention is wholly new and untouchable. But not seeking expert advice at the beginning of the innovative process generally results in vulnerabilities that can’t be foreseen with a limited view of the patent landscape.
Ashley Turner, patent attorney and director of BT Novo in Melbourne, Australia, notes that huge cost reductions can be realized in the filing phase by working with organizations that have a network of patent attorneys across the globe. Whether at the beginning of the innovative process, which is preferable, or during prosecution or at litigation.
Both Morehouse and Turner agree that true patent strategy can’t be a reflexive approach to competitor activity. It should involve creating a viable, dynamic path to establish ownership in a category while simultaneously seeking ways to gain the most value out of a patent portfolio on an ongoing basis. Working with its Symphony partners, BIG IP provides clients thorough, custom plans for patent portfolio management and business growth strategy that both maximize budget and increase portfolio value. Complementing BIG IP’s innovative approach to international patent translations and filing, IP Symphony supports companies throughout the patent lifecycle, from landscape assessment to portfolio establishment, along with market deployment and litigation funding to protect intellectual property and investment in its development.
Don’t wait until R&D completion to explore your patent’s landscape.
Contact us to discuss how to maximize value and establish category leadership.