For a start-up or mid-size company, devising an IP strategy can be a daunting task. Maybe you’ve filed a few patent applications, but don’t yet have a clear plan regarding what you want to achieve with your IP, much less a road-map telling you how to get there. As your patent portfolio grows, without a strategy in place, things could start to look a little bit like a tangled mess.
Aligning your patent strategy with business goals is a must. It can serve to focus your internal resources so time is not wasted on expensive and futile patenting activity. Perhaps your business is based on a core technology platform with a number of key enabling innovations that support the platform. In this case, a streamlined patent strategy might look like this:
Further, as a company grows and evolves, the patent strategy should shift along with its business goals. Small companies have an advantage in this regard as they are not as prone to miscommunication between departments. Often the patent person is just in the next office or a phone call away. Frequent communication with patent folks is a must. If your company is starting a new project, consider patenting any innovation that arises from the research. Filing early is an advantage since the United States and other commercially relevant jurisdictions are first-to-file. This means that the first entity to file at a patent office is granted the rights to a given technology.
Likewise, if a project is abandoned, this should be communicated to the IP folks as well. Patents that are no longer aligned with your business strategy can be culled or perhaps offered for license. Culling patents from a portfolio is relatively straight-forward. Throughout the life of a patent there are actions that must be taken to keep it alive during pendency, as well as fees that must be paid. By not taking the action and/or refraining from paying a fee, a patent or application will automatically die (i.e., become abandoned or lapsed in patent lingo). Continuous culling of patents is essential for a start-up as money is often in short supply. If you decide later to revive an abandoned patent or application, note that there are mechanisms for reinstatement in some countries. However, reinstatement is now always an available option (depending on the timing usually) and so the decision to abandon a patent should not be taken lightly. If you decide to keep a patent alive, licensing can be facilitated by companies that specialize in licensing IP rights.
Another advantage of having a clearly defined and properly communicated patent strategy is to facilitate financing. Investors want to make sure their investment will be protected from copyists (infringement by competitors). A clearly defined patent strategy will give them the peace of mind that their investment is being managed effectively and that the company’s intangible assets will not be knocked off. The same rationale is true for partnerships. If a partnership is sought, the new partner might want to see that a well thought out patent strategy is in place.
Sometimes investors or potential partners are just looking for assurance that you have filed patent applications and will not question whether your company has a defined IP strategy. However, having a plan in place could be the determining factor that sets you apart from competitors also vying for finance dollars but that have not invested the time in developing a well thought out IP strategy. If your company relies on only one patent to protect its innovation, having a plan regarding where you have filed or plan to file, and your rationale for country selection, could also help secure financing.
Of course, the above discussion is only general in nature. Legal advice should always be sought that is tailored to your actual fact pattern.